In a December 22 en banc decision, the Federal Circuit held that the Lanham Act’s bar on registration of disparaging marks violates the First Amendment. Finding that the disparagement provision is subject to strict scrutiny as a content-based restriction on speech, the Federal Circuit ruled that the government’s refusal to register disparaging marks furthered no compelling interest because it does not prevent use of such marks or protect consumers from exposure to such marks. The Federal Circuit further held that federal registration provides trademark owners valuable rights that cannot be denied because the government disagrees with the message conveyed by their marks. Denial of these important legal rights would discourage use of disparaging marks, thus inhibiting freedom of speech.
Tam is the “front-man” for the Asian American-comprised band The Slants, so named to “reclaim” or “take ownership” of Asian stereotypes. Tam sought to register the mark “THE SLANTS.” The Examiner refused to register the mark because a substantial composite of people of Asian descent would find the term disparaging. The TTAB affirmed the Examiner’s refusal. Tam appealed and argued that the disparagement provision of the Lanham Act § 2(a) is unconstitutional. On appeal, the Federal Circuit affirmed the TTAB by relying on In re McGinley, which reasoned that the disparagement provision does not violate the First Amendment because a refusal to register a mark does not bar the applicant from using the mark. The Federal Circuit sua sponte ordered a rehearing en banc. Click here for our detailed summary of this decision.