Type: Law Bulletins
Date: 12/22/2015

Federal Circuit Holds USPTO's Restriction of Trademark Registration for Offensive Marks Unconstitutional

On Tuesday, Dec. 22, 2015 a twelve-judge en banc panel of the U.S. Court of Appeals for the Federal Circuit (assembled sua sponte) vacated the decision of a previous three-judge panel of that court and the prior determination of the United States Patent and Trademark Office (USPTO). In doing so, the court overturned seventy years of precedent prohibiting the registration of scandalous, immoral, or disparaging marks.

The litigation upon which the ruling was made, In Re Simon Shiao Tam 14-1203 (Fed Cir., Dec. 22, 2015), was brought on behalf of Mr. Simon Shaio Tam, an Asian-American seeking trademark registration for the name of his band, “The Slants.” Mr. Tam’s band was so named to bring awareness to the cultural disparagement facing those of Asian descent and “make a statement about racial and cultural issues in the country.” The USPTO refused registration precisely because “slant” is a derogatory term used to mock a physical feature of people of Asian descent.

The government argued that it was possible to restrict trademark protection without violating the first amendment because a failure to permit registration in no way restricted the ability of a party from using the underlying language. Unconvinced, the Federal Circuit issued a 62-page opinion and found on behalf of Tam and numerous amici curia, identifying that the government was in fact penalizing the use of private speech by effectively denying individuals protection for certain language in the name of their brands, thereby restricting individuals through economic coercion. The court found that the disparagement prohibition regulates expressive aspects of the mark in question, rather than commercial speech, while noting that even if it were commercial, the need for heightened scrutiny would hold.

The Court emphatically states that “it is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle governs even when the government’s message-discriminatory penalty is less than a prohibition.” The court reasoned that even government restriction and coercion of private speech is prohibited. “The Government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by those marks.”

This case will directly impact the Washington Redskins’ appeal of the USPTO’s invalidation of the REDSKINS trademark and a Virginia District Court decision upholding that determination, currently before the Fourth Circuit Court of Appeals. Pro-Football, Inc. v. BlackHorse et al., No. 15-1874 (4th Cir. 2015). On March 5, the American Civil Liberties Union (ACLU) filed an amici curiae brief in support of the Washington Redskins in its battle with the USPTO over the validity of the REDSKINS trademark.

Generally considered the primary appellate court for trademark and patent matters, decisions of the Federal Circuit are highly regarded by the other circuit courts regarding intellectual property determinations. All eyes are now on the Fourth Circuit to see if they agree, or if a split in the circuits will cause the matter to proceed to the Supreme Court. 

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