E-News No.45

E-News No.45

First Amendment Protects Registration of Disparaging Trademarks, Federal Appellate Court Holds by Seth I. Appel (Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP – U.S.A.)

In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015)


Since its enactment in 1946, the federal Trademark Act has barred registration of marks that “may disparage.” 15 U.S.C. § 1052(a). In view of this prohibition in Section 2(a), the U.S. Patent and Trademark Office refused registration of THE SLANTS because it found this mark disparaging to people of Asian descent.

The Court of Appeals for the Federal Circuit held in December 2015 that the bar against disparaging marks violates the First Amendment of the U.S. Constitution because it amounts to viewpoint discrimination by the government. In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015). “It is a bedrock principal underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys,” the court explained. Therefore, the court deemed THE SLANTS registrable and vacated the USPTO’s refusal.

Section 2(a) previously had been held constitutional because it relates only to registration and does not affect an applicant’s right to use a disparaging mark (In re McGinley, 660 F.2d 481 (C.C.P.A. 1981)). In Tam, the Federal Circuit overturned this precedent, which has been “widely criticized.” The court emphasized the “expressive character” of trademarks. It explained that the government cannot deny the benefits of registration based on constitutionally-protected speech: “Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content.”

The court noted various benefits of trademark registration, including both substantive and procedural rights. For example, a federally-registered trademark is presumed to be valid, and the owner generally has the right to exclusive nationwide use. Further, the owner of a federal registration can sue in federal court, recover treble damages, and obtain the assistance of U.S. Customs in restricting importation of counterfeit goods. “The loss of these rights … is enough for us to conclude that § 2(a) has a chilling effect on speech.”

The court found no legitimate interest for denying registration to disparaging marks. “All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive,” the court explained. “This is not a legitimate interest.”

The court rejected the government’s claim that the bar against disparaging marks is “viewpoint neutral because it does not eliminate any particular viewpoint—only particular words.” On the contrary, the court explained, Section 2(a) serves “to stifle the use of certain disfavored messages.” In the present case, the trademark applicant named his band THE SLANTS “to make a statement about racial and cultural issues.”

The court also rejected the government’s claim that trademark registration is government speech and therefore outside the coverage of the First Amendment. “When the government registers a trademark, it regulates private speech. It does not speak for itself.” The USPTO’s processing of trademark registrations, the court explained, “no more transforms private speech into government speech than when the government issues permits for street parades, copyright registration certificates, or, for that matter, grants medical, hunting, fishing, or drivers licenses.” The court contrasted this situation with the government’s issuance of license plates carrying messages, which is government speech.

The court recognized that its holding will permit registration of marks that “convey hurtful speech that harms members of the oft-stigmatized communities.” However, “even when speech inflicts great pain,” it is protected by the First Amendment.

In 2014, the USPTO ordered cancellation of REDSKINS marks used by the Washington Redskins football team on the ground that they are disparaging to Native Americans. That decision currently is before the Court of Appeals for the Fourth Circuit. If the Fourth Circuit finds the bar against disparaging marks constitutional, it would create a circuit split that could be resolved by the Supreme Court.