Here's some big news for anyone who owns -- or is contemplating registration of -- a trademark that may offend certain audiences. The Federal Circuit Court of Appeals ruled on December 22nd that a law banning the registration of disparaging trademarks is unconstitutional. The Trademark Office and the courts had relied on that law, found in Section 2(a) of the Lanham Act, to refuse registration or affirm cancellation of marks found to contain racial slurs or discriminatory phrases, such as THE SLANTS, WASHINGTON REDSKINS, and STOP THE ISLAMITIZATION OF AMERICA, among others.
InIn re Simon Shiao Tam the government argued that a refusal to register a trademark under Section 2(a) does not prevent the applicant from using the trademark, and consequently does not impede free speech. However, the Federal Circuit ruled that the law -- which permits the government to deny the legal benefits of registration if it disapproves of the message conveyed by a trademark -- would penalize and inhibit free speech, in violation of the applicant's federal constitutional rights.
This decision stands at odds with the Eastern District of Virginia's ruling in Pro-Football, Inc. v. Blackhorse, which upheld the constitutionality of Section 2(a) of the Lanham Act and affirmed cancellation of six trademark registrations relating to the WASHINGTON REDSKINS football team. That decision currently is on appeal to the Fourth Circuit Court of Appeals. It remains to be seen whether that court will follow the Federal Circuit's decision, and whether the constitutionality of Section 2(a)'s disparagement prohibition ultimately will be heard by the Supreme Court.
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