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Ban on the Registration of “Disparaging” Trademarks Deemed Unconstitutional by the Federal Circuit

by | Dec 22, 2015 | Trademark | 0 comments

The Federal Circuit has ruled that Section 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office to deny or cancel a trademark if it disparages persons, institutions, beliefs, or national symbols, violates the First Amendment. The ruling vacated the U.S. Patent and Trademark Office’s refusal to grant a trademark registration to an Asian-American band seeking to register the mark “The Slants” on the grounds that the mark is offensive to Asian-Americans. 

In its ruling, the Federal Circuit held that:

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. The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.  It cannot refuse to register marks because it concludes that such marks will be disparaging to others                  

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. Even when speech ‘inflict[s] great pain,’ our Constitution protects it ‘to ensure that we do not stifle public debate.

Last year, the same provision was cited by the U.S. Patent and Trademark Office as a basis to cancel six of the Washington Redskin’s trademark registrations based on the finding that the mark “Redskins” is disparaging to Native Americans.  The ruling was later upheld by a U.S. district court and is currently on appeal to the Fourth Circuit Court of Appeals.

The Federal Circuit’s ruling could result in a victory for the Washington Redskins in their legal fight to keep their trademark registrations. Although, many experts predict that the Supreme Court will ultimately hear the issue and cannot predict which way the Supreme Court would rule. What is certain is that this will be a very important issue followed by both the legal community and public at large.