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Disparaging Trademark Registration Restrictions under the Lanham Act found Unconstitutional

In the last year, the Washington Redskins professional football team had its registered trademark REDSKINS cancelled because on the assertion made by the US Trademark Office that the mark is disparaging under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). However, that may now be reversed.

On December 22, 2015, the United States Court of Appeals for the Federal Circuit held that the “disparagement restriction” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates a person’s First Amendment right to free speech. See In re Simon Shaio Tam, en banc Fed. Cir., No. 2014-1203. In Tam, an Asian musician group, sought to obtained federal trademark protection in THE SLANTS mark, to describe their band. The examining attorney assigned to the group’s trademark application rejected the trademark application, asserting that because THE SLANTS mark had a negative connotation to Asian people. This rejection led to the appeal.

Why is this important? The Federal Circuit, which hears all appeals related to patent and trademark matters, has overturned In re McGinley, 660 F.2d 481 (CCPA 1981), which held that it is not a violation of one’s free speech for the Government to deny federal registration in a trademark. Judge Moore disagreed with this notion and stated:

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. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional.

In short, the Court does not believe the Government has the right to restrict speech because it does not like its meaning of the speech or in this case, a trademark. In addition, the Court was not persuaded by the Government’s argument that federally registered trademarks are considered “government speech.”

This decision has now limited a provision of the Lanham Act, which governs US Trademark Law. It is not clear whether the Government will attempt to appeal to the US Supreme Court. The US Supreme Court has been very active in the last few years regarding US patent law. This case likely opens up the door for registrations in trademarks that the US Trademark Office once considered “disparaging,” including REDSKINS.

If you are interested in reviewing the Court’s decision, please click here.

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John M. Burke is a trademark attorney who assists clients in selection, screening, registration, licensing and enforcement of trademarks and service marks. In addition to trademark prosecution and enforcement, John works with clients to identify, manage and license their intellectual property. Through Caseiro Burke’s Litigation Practice, John also provides intellectual property litigation service.

Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.

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