“Disparaging” Trademarks Afforded First Amendment Protection: Section 2(a) of the Trademark Act is Unconstitutional

The United States Court of Appeals for the Federal Circuit ruled last week that Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), the provision used as a basis to bar registration of “disparaging” marks, is unconstitutional and a violation of the First Amendment.

The Slants, an all-Asian American rock band, were denied federal trademark registration for THE SLANTS in the United States Patent and Trademark Office (USPTO) because the mark was deemed disparaging and thus unregisterable under Section 2(a). The TTAB affirmed the denial of registration.  Last April, the Federal Circuit also affirmed, but Judge Kimberly A. Moore urged the court to re-visit the 1981 precedential decision in In re McGinley, 660 F.2d 481 (CCPA 1981) en banc.

By a 9-to-3 vote, the court held that “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.”

The government argued that Section 2(a) does not implicate the First Amendment because it does not prohibit any speech and the USPTO’s refusal to register does not affect the owner’s right to use the mark. The Federal Circuit rejected this argument, stating that the denial of the benefits gained by federal trademark registration creates a serious disincentive for people to continue using a disparaging mark. The court noted that “the government has not pointed to a single case where the common-law holder of a disparaging mark was able to enforce that mark, nor could we find one. The government’s suggestion that Mr. Tam has common-law rights to his mark appears illusionary.”

This decision will likely have serious implications for similar suits where the USPTO denied registration based on a Section 2(a) “disparaging” finding, most notably, the recent revocation of the Washington Redskins’ trademark registrations.  The Supreme Court may also weigh in on the constitutionality of Section 2(a).