Disparaging marks and the First Amendment

by Kate E. Rieber

Under Section 2(a) of the Trademark Act, certain marks are restricted from registration if they contain immoral or scandalous matter; essentially, if the mark would offend a large portion of the general public, or considered vulgar, that is sufficient to deem it immoral or scandalous, and thus deprive it of federal registration. For example, the mark “BULLSH*T” (without the asterisk!) registration was refused based on 2(a), immoral or scandalous matter. This section further goes on to state that if the mark disparages or brings into “contempt or disrepute” persons (alive or dead), institutions, beliefs and/or national symbols, such mark will be refused registration.

However, in In re Tam, Appeal No. 2014-1203 (Fed. Cir. December 22, 2015)

[precedential], a recent appeal decided by the Federal Circuit, the Court determined that refusing to register marks considered “disparaging” violates free speech and the First Amendment. In Tam, the applicant sought to register THE SLANTS for “entertainment in the nature of live performances by a musical band.” The Examiner refused it, determining that it would be disparaging to a substantial portion of people of Asian descent. While the Applicant stated, among other things, that the mark was intended to take back, or “reclaim,” the stereotype of people of Asian descent, Applicant also argued that the provision itself was unconstitutional, as it was inhibiting free speech. While the government argued that it has a compelling interest is in fostering racial tolerance, the Court ultimately determined that the government cannot refuse to register disparaging marks because it disapproves of the message conveyed by the speech, further noting that refusing to register a potentially disparaging mark accomplished nothing towards promoting racial tolerance.

The government’s argument that refusal to register does not mean that the applicant cannot use the mark – and thus does not constitute censorship – was deemed unpersuasive. After all, a Registered trademark affords owners with certain rights and remedies to protect its mark, and thus its business. The Court further went on the state that the denial of the rights afforded to trademark owners under the Lanham Act would further inhibit free speech, as it would discourage others from using potentially disparaging marks for their goods and services.

This decision comes on the heels of the past few years’ focus on the NFL’s Washington Redskins team name and logo. While the USPTO cancelled the football team’s trademarks in mid-2014 for disparagement, In re Tam provides a potential foothold for the team, and others of its ilk, should its case find its way to the Supreme Court.

Kate E. Rieber is an intellectual property lawyer and an associate at Knull P.C., as well as a member of the N.Y. and N.J. bars.