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Intellectual Property Cases of Interest


Federal Circuit Rules that Federal Lanham Act Ban on Disparaging Marks is Unconstitutional.

Decision and Case:

On December 22, 2015, the U.S. Court of Appeals for the Federal Circuit, in an en banc decision in In re Simon Shiao Tam, Case No. 2014-1202 (Fed. Cir. Dec. 22, 2015) held that the disparagement provision of Section 2(a) unconstitutional under the First Amendment. For a complete review of the Court's analysis, the decision is available here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1203.Opinion.12-18-2015.1.PDF

Background of the Case:

15 U.S.C. §1052 of the Lanham Act, also known as Section 2(a), bans marks from registration that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter 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….” Lanham Act, Section 2(a), 15 U.S.C. §1052.

In November 2011, Mr. Tam filed a trademark with the United States Patent and Trademark Office (the “USPTO”) seeking to register the name THE SLANTS in connection with “entertainment, namely, live performances by a musical band”. The application was refused registration on the grounds that the mark was likely disparaging to “persons of Asian descent” under Section 2(a). Mr. Tam next brought his application before the Trademark Trial and Appeal Board (the “TTAB”). The TTAB is an administrative body within the USPTO responsible for hearing appeals from decisions by USPTO Examiners denying registration of marks. The TTAB affirmed the USPTO’s refusal to register the mark for the same reasoning. Next, on appeal to the federal courts, Mr. Tam challenged the constitutionality of Section 2 (a) of the Lanham Act before the Federal Circuit Court of Appeals. The Appeal was first heard by a three judge panel of the Federal Circuit which upheld the TTAB decision. Subsequently, the Court decided to rehear the case en banc, which means by the entire Court bench. An en banc hearing is often used for unusually complex cases or cases considered to be of greater importance.

In a thoughtful opinion, the Court wrote:

“The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.that [t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.”

Conclusion:

Based on the holding, the Court vacated the TTAB’s holding that Mr. Tam’s mark to register the name of his band is unregistrable.

Impact of the decision on future applications:

In plain English, this ruling restrains the USPTO from rejecting applications simply because they consider them disparaging.

If you have any question on how this impacts any current Office Actions you may have pending with the USPTO that cite disparagement as a ground for refusal, or any other matters where Section 2(a) is implicated, please feel free to contact us at info@gandplaw.com