A U.S. appeals court has overturned the legality of refusals of the U.S. Patent and Trademark Office’s to register offensive trade marks. The case, which concerned a band’s name, had been closely watched as the decision could impact on the attempt by the NFL’s Washington Redskins to overturn the cancellation of its trademarks. The NFL team had seven trade marks cancelled on the grounds the mark disparages American Indians.
The new decision vacates the U.S. Patent and Trademark Office’s refusal to register the name of the Asian-American rock band The Slants: The Portland, Oregon-based band, which plays “Chinatown dance rock,” appealed because the USPTO had twice rejected its name for a trademark on the grounds it disparages Asians. The Slants’ front man Simon Tam (Simon Young) had argued that the band adopted the name as a way to reclaim what had become a racial slur. In an interview after this decision he rejected any concern that the ruling would open the floodgates for racism or hate speech.
The U.S. Court of Appeals for the Federal Circuit sitting ‘en banc’ said approach taken by the USPTO violates the First Amendment of the U.S. Constitution. The court struck down the entire section of the Lanham Act that bars “disparaging” trademarks. Section 2(a) of the Lanham Act bars registration of a mark 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.”
The court clearly acknowledged that this deicision could lead to more the registration of more hateful trademarks in the future. Circuit Judge Kimberly Moore said in the majority opinion. of the twelve judge appellate court: “We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities” adding “Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others”. Judge Clark said:
“Courts have been slow to appreciate the expressive power of trademarks” adding “Words- even a single word – can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country…. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech.”
Eleven judges sitting en banc agreed with Judge Moore. Three judges dissented, arguing that Tam should be granted his individual trademark registration but that the statute shouldn’t be thrown out as unconstitutional on its face. Judge Timothy Dyk said: “The purpose of the statute is to protect under represented groups in our society from being bombarded with demeaning messages in commercial advertising… My answer is that the statute is constitutional as applied to purely commercial trademarks, but not as to core political speech, of which Mr. Tam’s mark is one example.”
In April, a three-judge Federal Circuit panel upheld the USPTO’s rejection of the mark.
The decision is likely to be appealed to the U.S. Supreme Court.
In Re Simon Shiao Tam, U.S. Court of Appeals for the Federal Circuit, No. 14-1203.