“Disparaging” Is Not Grounds To Deny: USPTO Not Allowed To Deny Trademark Registration For Being Disparaging Under §2(A)

On December 22, 2015 the Federal Circuit Court of Appeals, in the matter In re Simon Shiao Tam, issued an important decision regarding the refusal of federal registration to a mark considered to be “disparaging”. The case revolved around an Asian-American rock band with the potentially racially charged name of “The Slants”. The band was denied federal registration of their trademark of the same name, but appealed claiming this was unconstitutional; Federal Circuit Court of Appeals agreed stating, “content-based regulations are presumptively invalid.” Refusal of trademark registration on the grounds of being disparaging is an improper limiting of speech.

Specifically, §2(a) of the Lanham Act states:

“No trademark… shall be refused registration… unless it… Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”

The Court took issue with this statute by first holding “It is beyond dispute that § 2(a) discriminates on the basis of content in the sense that it ‘applies to particular speech because of the topic discussed’.” The government tried to claim their opposition to the mark was “content-neutral” because they would have opposed the mark had it been intended as a disparaging term or not (note: it was found the band was in fact not intending disparagement, but rather seeking to reclaim and repurpose the term in a positive manner). However, this argument was swiftly dismissed by the fact “an applicant can register a mark if he shows it is perceived by the referenced group in a positive way, even if the mark contains language that would be offensive in another context.” As such, this type of regulation is clearly not content or viewpoint neutral.

The Court continues by holding that even if restricting a trademark itself is not restricting speech, restricting a benefit based on the content of speech still serves to silence speech. Additionally, because of the vagueness of whether or not a mark will be rejected for being “disparaging”, there is a high level of uncertainty over what type of speech will be silenced or allowed. The silencing of speech, combined with the uncertainty of what speech will be silenced has “long been recognized as a First Amendment problem” that may contribute ‘significantly to the chilling effect on speech’.”

Finally, the Court concludes with the argument that even if a disparaging mark may be seen as racist or otherwise unsavory, there is nothing misleading or unlawful about a disparaging mark (something restrictions on commercial speech would cover). “The First Amendment forbids government regulators to deny registration because they find the speech likely to offend other”, the Court stated.

The take-away of this ruling is the excising of a part of the trademark examining procedure. This holding removes a sword formerly available to trademark examiners, and parties in opposition to trademarks. For example, this may have very interesting implications in the Washington Redskins trademark cancellation case, which was predicated on a §2(a) refusal for disparaging marks. While this could be seen as a blow to aggrieved parties seeking regulatory mechanisms to bar potentially offensive speech, this is a victory for first amendment advocates and those seeking to limit the government’s control, albeit tangential, on speech.

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