United States: The Federal Circuit Rules § 2(a) Of The Lanham Trademark Act Is Unconstitutional

Last Updated: January 4 2016
Article by Marsha G. Gentner

Coming as no surprise to anyone who attended or read the transcript of the en banc oral argument hearing in the case of In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015), the Federal Circuit Court of Appeals has ruled § 2(a) of the Lanham Trademark Act of 1946 violates the First Amendment on its face. The nine-judge majority limited its holding to § 2(a)'s prohibition on the registration of marks which "may disparage... persons, living or dead, institutions, beliefs or national symbols." In doing so, the Court expressly overruled its longstanding precedent to the contrary, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). Two judges would uphold the constitutionality of § 2(a) in its entirety, and another would hold that § 2(a) is facially constitutional, but as applied to Mr. Tam in this particular case, violated his First Amendment rights.

To determine whether a mark is unregistrable under § 2(a)'s disparagement provision, the U.S. Patent and Trademark Office (PTO) applies a two part test: (1) what is the likely meaning of the trademark in the context of its use; and (2) if found to refer to identifiable persons, institutions, etc., whether that meaning may be disparaging to a substantial composite of the referenced group. The majority opinion, written by Judge Moore, found this to be classic viewpoint discrimination by the government. The government argued that § 2(a) is content neutral because it is directed at words or symbols, and not the viewpoint or message of the mark's holder in using that designation. But the Court rejected this, pointing to numerous examples of identical terms accepted for registration, and rejected under § 2(a), depending on whether the message the referenced group takes from it is positive (registrable) or negative (not registrable). "Importantly, every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a message that is disparaging to certain groups." In re Tam, *24.

The holding that § 2(a) is viewpoint discrimination dictates the statute be subject to strict scrutiny under a long line of Supreme Court cases, the Federal Circuit held. Judge Moore noted that that the government did not even attempt to salvage the disparagement provision under strict scrutiny analysis.

The Court likewise rejected each of the government's other arguments. First, in response to the government's claim that § 2(a) does not prohibit any speech, leaving the trademark owner free to use the mark in commerce, the Court pointed to the "significant and financially valuable benefits" that federal trademark registration convers. These include nationwide constructive notice and priority, the ability to obtain incontestable status of a registered trademark, the presumption of validity of a registered trademark, the ability to block infringing imports and to bar the registration, trafficking or use of certain domain names, and the use of a registration defensively as a complete bar to a state or common law action for dilution. Denial of these benefits on the basis of the message conveyed has a chilling effect on, and impermissibly burdens, speech in violation of the First Amendment, the Court held.

Second, the Court rejected the contention that the accoutrements of trademark registration (the right to use the ® symbol, listing of the mark on the PTO Principal Register, issuance of a registration certificate) amounts to government speech, as opposed to regulation of private speech. As respects this argument, the PTO may have been its own worst enemy, as (the Court noted) it has publicly maintained for decades that issuance of a trademark registration does not amount to a government endorsement, imprimatur, or pronouncement with regard to the mark. The Court pointed out that the copyright registration scheme involves similar accoutrements—use of the © symbol, a registration certificate with a government seal—and yet, as the government conceded, this does not convert copyrighted content into government speech.

Finally, the Court rejected the contention that trademark registration is a form of government subsidy which it may refuse when it disapproves of the message the mark conveys. Finding that trademark registration does not implicate Congress's power to spend or to control the use of government property, the Court held § 2(a) to be a regulatory regime, not a government subsidy program. Once again, the Court analogized to the copyright registration scheme, and the government's concession that such is subject to First Amendment protection.

As an alternative ground, the Court analyzed § 2(a) as commercial speech regulation, under an intermediate scrutiny standard, requiring only that the regulatory scheme serve a substantial government interest, narrowly tailored to serve those interests. The Court held that all of the government's proffered interests "boil down to permitting the government to burden speech it finds offensive" (id. *61), which is not a legitimate interest.

Judge Dyk, concurring and dissenting in part, essentially took issue with the blanket strict scrutiny approach. Thus, he would find § 2(a) constitutional as to purely commercial trademarks, but not as to core political expression (a category in which he places the mark at issue in this case). In Judge Dyk's view, the purpose of the statute is "to protect underrepresented groups in our society from being bombarded with demeaning messages in commercial advertising" (Dyk, concurring, *3); disparagement in commercial advertising, in Judge Dyk's opinion, furthers no First Amendment value. Judge Dyk points to the Civil Rights Act's Title VII prohibition of sexually or racially disparaging speech in the work place as but one example of the established principle that speech in the commercial context may be more freely regulated than other forms of protected speech. Judge Dyk disagrees with the majority that all disparaging marks have an expressive component but believes that some, like the one at issue in this case, do implicate core expression; hence, his "as applied", rather than facial, rejection of § 2(a) on First Amendment grounds. According to Judge Dyk, this also distinguishes the copyright registration scheme, which always involves core expression.

Judge Reyna's dissenting opinion, too, rejects strict scrutiny analysis of § 2(a)'s disparagement provision. In his view, trademarks are commercial speech, and the decision to grant or deny registration need only be reviewed under an intermediate standard of scrutiny. Judge Reyna finds that commercial speech which insults groups of people based on race, gender, religion or other demographic trait, tends to disrupt commercial activity and undermines the stability of the marketplace. Judge Reyna sees § 2(a) not as an effort to suppress free expression but rather "to mitigate the disruptive secondary effects that a particular type of low-value speech may have when used in a commercial context." Reyna, dissenting, *7. As such, according to Judge Reyna, § 2(a) is both content neutral and advances a substantial government interest. Judge Reyna also points to the Civil Rights Act—Title VIII's ban on advertising indicating a discriminatory preference, and Title VII's restrictions on job advertisements and ban on harassing speech in the workplace—as confirming such pure speech regulations in service of this government interest may withstand First Amendment intermediate scrutiny.

Finally, Judge Reyna (as do Judges Dyk and Lourie) believes that § 2(a) does not unduly burden a trademark owner in the exercise of his First Amendment rights, but only denies a government created benefit. The trademark owner is "free to communicate his chosen message within or without commerce, so long as he is willing to permit others to do the same." Id. *11.

Judge Lourie, also writing separately in dissent, would leave In re McGinley intact, on stare decisis grounds. Further, in addition to rejecting the premise that denial of a trademark registration impairs any free speech rights, Judge Lourie would find, in any case, that trademark registration has a government, as well as private, speech context. 

In re Tam, although an en banc decision, may not be the last word, however. Because the federal statute has been declared unconstitutional, the government may appeal to the Supreme Court, though there is no indication yet whether it will do so. Further, the same issue is pending on appeal before the Court of Appeals for the Fourth Circuit. Pro-Football, Inc. v. Blackhorse, No. 15-1874. Particularly if the Fourth Circuit reaches a different result, it looks like the constitutionality of § 2(a) may be headed to the Supreme Court. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.