“Offensive” Trademarks Allowed – for Now…

The First Amendment bars the federal government from rejecting a trademark that some people may find offensive, the U.S. Court of Appeals for the Federal Circuit ruled on Tuesday, overturning a 70-year-old provision of federal law.  In In re Tam, by a 9-3 vote, the court struck down a provision of the 1946 Lanham Act (Sec. 2(a)) which prohibited registration of “disparaging “ trademarks on the grounds it violated the First Amendment.

In Tam, “The Slants”, an Asian American rock band, appealed the U.S. Patent and Trademark Office’s rejection of its application to trademark its name. In overruling the PTO’s decision, the Court’s majority said that free speech is protected even when it inflicts “great pain”, and was not dissuaded by the dissent which predicted the ruling would lead to a “further degradation of civil discourse.”  (The court noted that while the Act’s exclusion of disparaging marks was not a ban on free speech because owners can use their marks under common, the exclusion did deprive owners of federal trademark registration protections and advantages.)

It will be interesting to see if the Federal Circuit’s decision affects such pending cases as the Washington Redskins’ appeal of the PTO’s cancellation of six trademarks registered to its name.  More interesting still will be the effect of the decision on efforts to trademark slogans such as “Stop the Islamisation of America”, and similar phrases which are sure to proliferate in 2016 presidential and congressional campaigns.

The Slants case is likely to wind up before the Supreme Court.  Given the Roberts Court’s hostility towards federal regulation, we’re betting it will uphold the Federal Circuit.