On April 20, 2016, the United States Patent and Trademark Office (“PTO”) filed a petition for a writ of certiorari to the Federal Circuit seeking Supreme Court review of that Court’s decision in In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2016), holding the disparagement provision of Section 2(a) of the Lanham Act, 15 USC §1052(a), to be facially unconstitutional as a violation of the Free Speech Clause of the First Amendment. 

As earlier discussed in this blog (In re Tam: Section 2(a) Unconstitutional Under the First Amendment (http://www.marksworksandsecrets.com/2015/12/in-re-tam-section-2a-unconstitutional-under-the-first-amendment/)) ,  In re Tam involved the PTO’s denial of trademark registration of THE SLANTS for a rock and dance band.  The PTO Examiner, and then the Trademark Trial and Appeal Board, and eventually the Federal Circuit Court of Appeals all denied the Applicant Simon Tam’s trademark application on the ground that it violated Section 2(a) of the Lanham Act, which prohibits registration of trademarks that are “scandalous, immoral, or disparaging” and that a substantial composite of the referenced group perceives as disparaging a religion, nation, ethnic group, belief system, and the like.

However, the Federal Circuit later vacated its decision and reconsidered the matter en banc.  In a majority opinion issued by Circuit Judge Kimberly Moore, the Court struck down Section 2(a) because it did not withstand strict scrutiny under the First Amendment.

The PTO in its petition presents the question on certiorari as follows:  Whether the disparagement provision is facially invalid under the Free Speech Clause of the First Amendment.

The thrust of the PTO’s argument is that its denial of a federal trademark registration is not a prohibition of speech, or a significant abridgement of trademark rights, because federal registration does not create trademark rights. Trademark rights are created simply through use.  A denial of registration is not an injunction against use of a mark.  The PTO argues that, while a trademark owner may lose some benefits for want of a federal registration, most of the important enforcement provisions are still available to common law trademark owners.  The Applicant Simon Tam was completely free to name his band THE SLANTS, and to stop others from infringing the name.

The PTO further argues that federal registration is a government benefit, and like other government benefits, the government is at liberty to “selectively fund a program to encourage certain activities it believes to be in the public interest….” First Amendment scrutiny is more relaxed when the government establishes eligibility criteria for a voluntary government program than when it restricts wholly private speech.  The PTO argues that the “federal trademark-registration system” created by Congress is just such a voluntary government program.

Finally, the PTO argues that the Federal Circuit erred in deeming the disparaging provision as imposing an “unconstitutional condition” on private speech. In general, the “unconstitutional condition” doctrine provides that the government cannot condition a person’s receipt of a government benefit on the waiver of a constitutionally protected right.  As the PTO understands it, the “unconstitutional condition” doctrine applies when the government places a condition on the recipient of a subsidy, rather than on the particular program or service as a whole.

* * *

The disparagement provision of the Lanham Act has captured the public’s attention since it was famously (or infamously, depending on your point of view) used in June 2014 to revoke the Washington Redskins’ trademark registrations.  This well-expected petition for certiorari sets the stage for the Supreme Court to review the legality of Section 2(a) .