Where More Often May Be Heard A Disparaging Word

Just on the eve of its two–day holiday closure, the Federal Circuit has issued a notable en banc opinion holding that the provision of law that prohibits the registration of “disparaging” trademarks is unconstitutional because it violates the First Amendment’s prohibition on restraints on free speech. A nine–judge majority of the court reached the conclusion “that the disparagement proscription of [the Lanham Act] is unconstitutional” because it “amounts to viewpoint discrimination” by the federal government.

Under the relevant statute governing trademark registration, a disparaging mark is one that dishonors, slights, deprecates, degrades, or affects or injures by unjust comparison. In the particular case, In re Tam, Simon Shiao Tam, front man for the Asian–American dance–rock band The Slants, sought to register a trademark in the band’s name in connection with musical performances. The declared intent of the band in choosing a name evocative of racial stereotypes was to reclaim the term as a political statement. The PTO, however, refused to register the mark because it concluded that the name The Slants disparaged Asians and Asian–Americans. In reviewing that decision, the Federal Circuit concluded that the statutory provision was a viewpoint–based restriction on free speech because it required the PTO to determine whether to register a mark based solely on the content of the mark. Positive representations could be registered as non–disparaging, while negative representations of the same persons or groups could not be registered because the content of the marks disparaged them. The majority further held that, even if trademarks are viewed as purely commercial speech, the disparagement provision  was unconstitutional under the more relaxed test for the regulation of commercial speech.

As previewed by the court in its opinion, this holding will almost certainly have a direct bearing on the highly publicized dispute over the registrability of marks held by the Washington “Redskins” football team.