December 23, 2015

Federal Circuit: Statutory Bar on "Disparaging" Trademark Registrations Violates Free Speech

Holland & Knight Alert
Daniel C. Neustadt


  • The U.S. Court of Appeals for the Federal Circuit has held that the Lanham Act's prohibition against federal registration of "disparaging" trademarks violates the constitutional right to free speech protected by the First Amendment.
  • The decision could impact a highly publicized trademark dispute concerning Washington, D.C.'s NFL team.

An en banc panel of the U.S. Court of Appeals for the Federal Circuit has held that the Lanham Act's prohibition against federal registration of "disparaging" trademarks violates the constitutional right to free speech protected by the First Amendment. The Federal Circuit's split decision in In re Tam, issued Dec. 22, 2015, invalidates the statutory provision at the heart of the trademark dispute concerning Washington, D.C.'s National Football League (NFL) team.

Majority Finds Impermissible Content- and Viewpoint-Based Discrimination; Five Opinions Issued

The Federal Circuit's decision concerned an application filed by Simon Shiao Tam, the leader of a rock band called The Slants, to federally register the band's name as a trademark. The U.S. Patent and Trademark Office (PTO) refused registration based on Section 2(a) of the Lanham Act, which prohibits registration of any 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."

A refusal to register a trademark does not affect an applicant's right to use his or her mark. Accordingly, the Federal Circuit and its predecessor courts have long upheld the constitutionality of the disparagement provision, on the rationale that "[n]o conduct is proscribed, and no tangible form of expression is suppressed." The In re Tam majority rejected this reasoning, characterizing the Section 2(a) bar on registration of disparaging marks as content-based and viewpoint-based discrimination that deprives individuals of numerous substantive and procedural rights.  

In a concurrence, Judge Kathleen O'Malley asserted that the disparagement provision of Section 2(a) was also unconstitutionally vague, and therefore a violation of the Fifth Amendment's Due Process Clause. O'Malley juxtaposed the PTO's acceptance for registration of THE DEVIL IS A DEMOCRAT against its refusal to register HAVE YOU HEARD SATAN IS A REPUBLICAN as one example of the inconsistent and "seemingly arbitrary" application of the disputed provision.

In a separate concurrence, Judge Timothy Dyk opined that the Lanham Act's disparagement provision was unconstitutional as applied to expressive or core political speech, such as THE SLANTS, but not facially invalid as applied to commercial speech. Dyk wrote, "Unlike core political speech, where offensiveness or disparagement has recognized value in its tendency to provoke debate, disparagement in commercial advertising furthers no First Amendment value."

Judge Jimmie Reyna, in one of two dissents, asserted that all trademarks are commercial speech and therefore not subject to such protection that would invalidate the provision at issue. "The government's interest in the orderly flow of commerce is substantial," Reyna wrote, and justifies the restriction against registration of marks deemed to be disparaging. "The marketplace of ideas differs dramatically from the marketplace of goods and services."

Potential Effect on NFL Team's Trademark Dispute

The decision may impact a highly publicized trademark appeal concerning the Washington, D.C., NFL team. In June 2014, the Trademark Trial and Appeal Board ordered the cancellation of registrations owned by the team, finding, under Section 2(a) of the Lanham Act, that at the time of their registration the subject marks consisted of matter that "may disparage" a substantial composite of Native Americans. U.S. District Judge Gerald Bruce Lee of the Eastern District of Virginia affirmed the Board's decision in July 2015. An appeal is currently pending in the U.S. Court of Appeals for the Fourth Circuit, portending a potential circuit split that may warrant review of the issue by the U.S. Supreme Court.


Information contained in this alert is for the general education and knowledge of our readers. It is not designed to be, and should not be used as, the sole source of information when analyzing and resolving a legal problem. Moreover, the laws of each jurisdiction are different and are constantly changing. If you have specific questions regarding a particular fact situation, we urge you to consult competent legal counsel.

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