On December 22, 2015, the Federal Circuit Court of Appeals, sitting en banc, held that the Lanham Act's exclusion of "disparaging" trademarks from registration violated the First Amendment and is unconstitutional. In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015).

Simon Shiao Tam, a founding member of the band The Slants, sought registration of THE SLANTS as a trademark in 2011 for use in connection with his band's live music performances. Tam chose The Slants as his band's name in an effort "to 'reclaim' and 'take ownership' of Asian stereotypes." The Trademark Office rejected the application on the grounds that the mark "'deride[s] and mock[s] a physical feature' of people of Asian descent." This determination that THE SLANTS was disparaging was affirmed on appeal by the Trademark Trial and Appeal Board and then again on appeal by the Federal Circuit Court of Appeals; however, THE SLANTS case was reheard by the Federal Circuit en banc, which held that the disparaging trademark exclusion was unconstitutional.

Section 2(a) of the Lanham Act precludes scandalous, immoral, or disparaging marks from being registered, and this has prevented the registration of numerous applications for marks containing racial slurs, swear words, and arguably vulgar designs over the last several decades. The 9-3 majority in In re Tam determined that excluding these types of marks from registration is a viewpoint-based denial of protection of speech by private speakers that cannot be reconciled with the First Amendment.

The most significant conclusions that the majority drew were: (1) the disparagement exclusion is viewpoint based, rather than content based, because it precludes registration of marks that describe groups in a negative way but allows registration of marks that refer to groups in a positive way; (2) although the government can discriminate against speech based on viewpoint when the speech is considered to be that of the government itself, federal trademark registration is not government speech and is a regulatory activity; and (3) even if registering a trademark is considered a subsidy or benefit, the denial of an available benefit based on the viewpoint of speech is still unconstitutional. The dissenting judges disagreed with a number of the majority's conclusions, namely, whether trademark registration is government speech and whether the government has a sufficiently justifiable interest in restricting subsidies.

We are starting to see the fallout from the In re Tam decision in other cases. In In re Brunetti, No. 85310960, 2014 WL 3976439 (T.T.A.B. Aug. 1, 2014), the TTAB affirmed the Trademark Examiner's refusal to register the mark FUCT based on the Lanham Act's scandalous and immoral exclusions. On appeal to the Federal Circuit, the USPTO and Brunetti submitted separate letters to the Federal Circuit addressing In re Tam in light of their case. The USPTO interestingly conceded that the scandalous and immoral exclusions violate the First Amendment if it is true that the disparagement exclusion does, so the case should be remanded. Despite this concession, the USPTO did stipulate that it believes these exclusions to be constitutional, so this approach was likely a strategy to avoid giving the Federal Circuit another chance to look at the disparagement exclusion before In re Tam could perhaps reach the Supreme Court.

The 2(a) exclusion has become a particularly hot topic in the last few years, especially in light of the media attention that the REDSKINS case has garnered. Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D.Va. 2015), appeal docketed, No. 15-1874 (4th Cir. Aug. 6, 2015). As discussed in the IP Bulletin Quick Update in Summer 2014, several registrations of the REDSKINS mark were canceled by the TTAB on the grounds that REDSKINS was disparaging of people of Native American descent. Currently this case is being appealed to the Fourth Circuit Court of Appeals, and the parties recently submitted their opening briefs. Not surprisingly, THE SLANTS decision in the Federal Circuit will play a large role in bolstering Pro-Football's First Amendment arguments. Although Federal Circuit decisions are not binding on the Fourth Circuit, they certainly are influential, particularly because the Federal Circuit hears many trademark cases that originate from TTAB decisions. If the Fourth Circuit's decision does not align with the Federal Circuit, however, there is a higher likelihood that the Supreme Court will consider these cases.

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