Law barring registration of disparaging trademarks is unconstitutional

Disparaging trademarks can be registered. The U.S. Court of Appeals for the Federal Circuit ruled that the U.S. Patent and Trademark Office must register the trademark “The Slants”.   In the case of In re Tam, the court held that the law against the registration of trademarks that disparaging of groups is a violation of the 1st Amendment.  You can read the case here. The Slants are a band from San Francisco.  The band members are Asian-American. Slants is a slur and the band members adopted the name as a comment on racial and ethic prejudice.

When the band sought to register their name with the US Patent and Trademark Office, its application was refused by the USPTO’s examining attorney assigned to the application.  The Trademark Trial and Appeals Board upheld the refusal.  The band appealed to the Federal Circuit.  A three judge panel from the Federal Circuit upheld the refusal.  However, the Federal Circuit agreed to rehear the case with all of the judges of the circuit participating.

The full court held that the refusal to register The Slants was unconstitutional as a violation of the First Amendment rights of the trademark owner.  The court held that denying registration of such trademarks was viewpoint discrimination by the government and unconstitutional. Previously, the courts held that the refusal of registration was not a First Amendment violation since the government was not preventing the use of the trademarks. Registration was a government act, so the law against disparaging trademarks was constitutional.  The Federal Circuit disagreed.

I am not surprised by the decision. One problem with the law (15 U.S.C. 1052(a)) as to disparaging trademarks is that it is vague and the courts have struggled to give a clear definition for determining when trademarks are disparaging.  Last Fall, I taught trademark law last Fall at California Western School of Law.  When we studied registration and the refusal of registrations, I asked my students what they thought of the standards articulated by the courts.  They, and I, agreed that the standards were vague.

A large number of parties filed friends of the court briefs (known as an amicus curiae brief) in this case.  Most interestingly, the parties to the Redskins case filed briefs.  The NFL football team, the Washington Redskins had its registrations for “Redskins” trademarks cancelled by the USPTO after a cancellation proceeding was brought by Native American. The grounds for the cancellation were that the trademarks were disparaging to Native Americans.  The Redskins team sued in U.S. District Court to have its registrations reinstated.  That case is pending.