Is the door to scandalous trademarks about to open?

Michael Palmisciano, The Daily Record Newswire

For nearly 70 years, Section 2(a) of the Lanham Act has prohibited registration of disparaging, scandalous and immoral trademarks. Courts and the U.S. Patent and Trademark Office consistently justify this restriction on the basis of public policy.

Critics, meanwhile, argue that Section 2(a) is an unconstitutional restraint on the freedom of speech.

Now, in a long-awaited move, the U.S. Court of Appeals for the Federal Circuit is poised to consider whether the Lanham Act's bar to registration of offensive marks violates the First Amendment.

On April 27, the Federal Circuit vacated its panel opinion in In re Tam, in which it affirmed the USPTO's refusal to register the mark THE SLANTS under Section 2(a). The mark had been applied for by Shiao Tam, the leader of an eponymous Asian-American dance rock band, in connection with "entertainment in the nature of live performances by a musical band."

As the panel acknowledged, Tam and his band are known for their satirical use of the mark and other Asian stereotypes to "weigh in on cultural and political discussions about race and society."

Tam contended that the USPTO's rejection of his application unconstitutionally violated his right to free speech.

As it currently exists, however, the Lanham Act's bar to registration of disparaging marks does not contemplate trademarks as commercial speech entitled to First Amendment protection. Instead, courts and the USPTO consider simply whether a substantial composite of relevant persons may perceive the mark as disparaging. Thus, the satirical or culturally critical nature of a trademark is largely immaterial for determining if registration is appropriate.

Applying that black letter law, the Federal Circuit panel affirmed the USPTO's refusal to register THE SLANTS. In its opinion, the court cited dictionary definitions, which "universally characterize the word 'slant' as disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent."

The court declined to give weight to the critical context in which Tam and his band actually use the mark. Moreover, the panel held that it was bound by precedent from considering a First Amendment challenge to the constitutionality of Section 2(a).

In conjunction with the panel opinion, however, Judge Kimberly Ann Moore issued 24 pages of "additional views" in which she argued that "[t]he time has come" to reexamine the constitutionality of Section 2(a).

In Moore's view, trademarks can function as protected commercial speech. The Supreme Court consistently strikes governmental attempts to suppress protected speech merely because such speech is offensive. Instead, the government must demonstrate a substantial interest to justify content-based regulations.

According to Moore, the government does not have a substantial interest in barring the registration of disparaging trademarks. Her opinion dismissed the traditional arguments in favor of Section 2(a) - discouraging the use of offensive marks and insulating the government from being seen as giving its imprimatur to disparaging terms - as insufficient to justify this bar to registration.

By denying federal registration to disparaging marks, Moore reasoned that Section 2(a) empowers the USPTO to make "a moral judgment based solely and indisputably on the mark's expressive content." Therefore, Moore contended, the courts should reconsider whether Section 2(a) is an unconstitutional condition on the exercise of private commercial speech.

In light of Moore's additional views, the Federal Circuit vacated the panel's opinion and ordered, sua sponte, an en banc rehearing of In re Tam. In their briefs, the parties address whether the bar to registration of disparaging marks in 15 U.S.C. §1052(a) violates the First Amendment.

The forthcoming en banc ruling likely will have significant implications for trademark applicants.

If the Federal Circuit rules that Section 2(a)'s bar to registration of disparaging marks is unconstitutional, then the door will open for registration of a wide range of marks that are currently foreclosed from registration.

Such a ruling would permit registration of all disparaging marks, not simply those like THE SLANTS that express cultural criticism, satire or irony. This includes marks like REDSKINS for professional football and KHORAN for wine - both of which have been rejected or cancelled under Section 2(a).

Moreover, although the en banc rehearing is limited to the issue of disparaging marks, it is likely that the court's ruling will encompass "scandalous" marks as well. As Moore noted, like disparaging marks, government "disapproval of the message" frequently is the basis for denying registration of many scandalous marks. If the mark is offensive, shocking or morally objectionable to a substantial composite of the general public, then the USPTO will refuse registration.

Under that framework, the USPTO has denied registration of COCAINE for energy drinks and COCK SUCKER for rooster-shaped lollipops.

An en banc ruling in favor of free speech protection for expressive trademarks could turn this framework on its head and open the door to registration of otherwise scandalous marks.

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Michael S. Palmisciano practices in the corporate department and intellectual property group at Sullivan & Worcester in Boston.

Published: Mon, Jun 15, 2015

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