- Posted by Holmes Weinberg, PC
- On December 22, 2015
The Court of Appeals for the Federal Circuit, which governs appeals from the Trademark Office, has ruled that the barring of “disparaging” trademarks or service marks from federal registration violates the First Amendment. In this 62 page en banc (the entire panel of judges heard the case) decision, the majority of the Federal Circuit in In re Simon Shiao Tam, ruled that the “disparagement” restriction in Section 2(a) of the federal Trademark Act, which has been used to prevent registration of a number of “disparaging” marks including the REDSKINS professional football team name, is impermissible government regulation impermissibly burdening private speech based on disapproval of the message conveyed and therefore violates the First Amendment. The court left open for another day the constitutionality of the Section 2(a) regulations prohibiting registration of “immoral, deceptive or scandalous” marks, or marks “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 facts of the case were whether the Asian band name THE SLANTS should be denied registration under Section 2(a). The Trademark Office had refused registration on the basis that the name was disparaging of Asians. Significantly , the owner of the mark, a band member, claimed that the name was chosen to “reclaim” and “take ownership” of Asian stereotypes, urging that Asians should be proud of their heritage and not offended by stereotypical names. As a result of this decision, the Trademark Registries likely will become pretty interesting for a while.