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IP Alert: Federal Circuit to Consider En Banc If Bar on Registration of “Disparaging” Marks Violates First Amendment

April 27, 2015

Today, the Court of Appeals for the Federal Circuit ordered en banc review of a panel decision last week in In re Tam, a trademark case. The issue to be decided en banc is “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?” The issue of whether “disparaging” marks are subject to federal registration has received substantial attention lately, in light of the U.S. Patent and Trademark Office’s cancellation of the “REDSKINS” trademark for the Washington Redskins football team, as previously discussed here. The decision to hear the Tam case en banc appears to reflect a recognition of the growing public interest in this issue. 

The trademark applicant, Simon Schiao Tam, sought to register the mark THE SLANTS for his Asian-American dance rock band. Tam is of Asian heritage, and asserted that he selected that mark to take ownership of certain Asian stereotypes and in doing so express pride in his Asian heritage. Nonetheless, the Trademark Examining Attorney found significant evidence that the term “slants” is disparaging of Asians and refused registration under Section 2(a) of the Lanham Act. That statute provides that no mark should be registered 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.” This refusal was upheld by the Trademark Trial and Appeal Board (TTAB).

On appeal, the Federal Circuit set forth the current legal standard for a refusal of registration on disparagement grounds. Under this standard, the first inquiry is to determine the likely meaning of the mark at issue. On that issue, there was significant evidence of multiple meanings of the term, some of which were innocuous, but one of which was directed toward people of Asian descent. In view of that, the court next examined the actual use made of the mark. The court found there was substantial evidence in the record to support the finding that the mark likely refers to those of Asian descent.

The next area of inquiry is whether the meaning of the term in question is disparaging to a substantial composite of the referenced group, in this case, to Asians or those of Asian descent. Finding that there was substantial evidence that the mark would likely be considered offensive to the subject group, the court affirmed the findings of the TTAB and refused registration. 

Tam also had brought a number of constitutional challenges to Section 2(a), including a First Amendment challenge. Judge Moore, the author of the opinion, denied the First Amendment challenge in light of a controlling earlier case from the Court of Customs and Patent Appeals. In a separate opinion, though, she set forth additional views on Tam’s First Amendment challenge. After a lengthy analysis of certain First Amendment cases, Judge Moore stated that the court should reexamine the constitutionality issue, stating “We have yet to be presented with any substantial government interests that would justify the PTO’s refusal to register disparaging marks.”

The court issued the Tam decision on April 20, one week ago. Today, the court vacated the panel decision and ordered that the case be heard en banc, and in doing so, invited amicus briefing. As such, and in light of the copending litigation on the REDSKINS mark, the Tam case is likely to generate substantial interest in the legal community.

Fitch Even attorneys will monitor the progress of the Tam case and will report on the court’s eventual decision in a future alert. If you have any questions regarding this case, please contact Fitch Even partner Joseph T. Nabor.


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