Appeals court tosses “disparagement” bar against registration of “offensive” trademarks

Last May, our colleague Kevin “the Swami” Goldberg called readers’ attention to an interesting case wending its way through the U.S. Court of Appeals for the Federal Circuit. It involves the rejection, by the U.S. Patent and Trademark Office (PTO), of an application for federal registration of the trademark “The Slants”. As it turns out (and we never doubted that this would be the case), the Swami nailed it again.

The Slants are an all-Asian, “ChinatownDanceRock” band formed in 2006 and fronted by Simon Shiao Tam. Tam, an Asian, chose the band’s name in an effort to “reclaim” and “take ownership” of Asian stereotypes because the band “feel[s] strongly that Asians should be proud of their cultural heri[ta]ge, and not be offended by stereotypical descriptions.” In 2010, Tam decided it was time to register the band’s name as a trademark.

The PTO rejected Tam’s application because, in the PTO’s view, the term “slants” disparages “persons of Asian descent” (even though, as far as we can tell, none of those persons – or anybody else, for that matter – objected to Tam’s application). Since Section 2(a) of the Lanham Act bars registration of any mark that (among other things) “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute”, rejection of the application was a no-brainer, given the PTO’s conclusion that the term is disparaging. This decision was upheld by the Trademark Trial and Appeal Board (TTAB).

Tam appealed to the Federal Circuit and, as Prof. Goldberg reported last May, a three-judge panel affirmed the PTO’s rejection … BUT the judge who wrote the panel opinion – Judge Kimberly Ann Moore – also appended to it a separate set of “additional views” in which she made clear that she had serious reservations about the constitutionality of Section 2(a). And then, barely a week later, the full Federal Circuit, en banc, acting on its own motion, vacated the panel decision and called for an en banc hearing on whether Section 2(a) violates the First Amendment.

At that point, the Swami observed that, “[w]hile the vacation of the panel decision and the setting of an en banc proceeding don’t necessarily mean that the ‘disparagement’ provision is toast, that’s not a bad bet.” The en banc proceeding has now been concluded and, sure enough, the en banc decision effectively declares Section 2(a) to be toast.

Writing for herself and seven of her colleagues, Judge Moore holds that Section 2(a) violates the First Amendment on its face – meaning not only that it could not be invoked to toss Tam’s application, but that it can’t be invoked to toss any application. Two members (O’Malley and Wallach) of the eight-judge majority would have gone even further, arguing that Section 2(a) also violates the Fifth Amendment. Judge Dyk (who, in his pre-judging days, was a well-respected member of the communications bar) concurs in part and dissents in part. He’s OK with the notion that Tam’s application should not have been rejected, but he’s not inclined to say that the Section 2(a) disparagement provision can’t be constitutionally applied in some, possibly many, cases. And two judges (Lourie and Reyna) dissent, arguing that Section 2(a) is hunky-dory.

The 110-page bundle of opinions (five in all) is a treat for any First Amendment aficionado. The judges variously explore a wide range of free speech jurisprudence, demonstrating the complexity and sensitivity of the issues on the table. We highly recommend careful review of the opinions.

And taking a look at these decisions would not be a bad idea, because it’s possible, if not likely, that we’ll be seeing more about them in coming months. Not only is the Slants case of particular interest in and of itself, but it is also likely to affect the eventual disposition of the much-higher-profile trademark case currently being slugged out in the U.S. District Court in Virginia – that is, the challenge to the long-held trademark registration for the NFL’s “Washington Redskins.”

As Kevin pointed out in his post last May, the issues underlying the Slants case are largely identical to those in the Redskins case. Now that the Federal Circuit has held for Tam, that precedent – while not binding on the Virginia District Court – could persuade the judge in the Redskins case. If it doesn’t persuade either that District Judge or the Fourth Circuit on appeal, that would set up a classic “circuit split” that could lead to Supreme Court review in a year or two.

And broadcasters should recognize that this case could eventually affect their lives as well. The “disparagement” provision of Section 2(a) is intended in large measure to protect people from being offended. The same general purpose underlies the FCC’s broadcast indecency policy. If protection from possible offense is not a constitutional basis for rejecting trademark registrations, how can it be constitutional as a basis for penalizing broadcasters to the tune of hundreds of thousands of dollars in forfeitures?

To be sure, trademark registration is not the same as broadcast regulation. But the two are in some relevant respects analogous. For decades broadcasters have tried to get the Supreme Court to declare that the broadcast of content that some governmental regulator may perceive as “offensiveness” is not a permissible basis for penalizing broadcasters. The Court has thus far declined to address that question head-on. The Slants case (with or without the Redskins case in tow) may provide another opportunity to get the Supremes to consider and resolve, at long last, the validity of regulation based on “offensiveness”. We shall see.