Scandalous Material

On December 22, 2015, The United States Court of Appeals for the Federal Circuit weighed in on the question of politically correct speech in the context of trademark registrations. In In Re Tam, an applicant for a trademark challenged the U.S. Patent and Trademark Office’s rejection of his application on the grounds that the proposed mark was “scandalous” under Section 2(a) of the Lanham Act.

 

The mark in question,  THE SLANTS, is the name for a musical group based in the Pacific Northwest comprised of musicians of Asian-American background. The trademark application was submitted by Simon Tam, an Asian-American, who serves as lead singer for the band. Mr. Tam chose the name ironically and adopted it as an opportunity to take control of the term.

 

The Federal Circuit heard the dispute en banc and concluded that use of a trademark term is private commercial speech and therefore protected by the First Amendment. The government, the court writes, has no business trying to regulate it by denying the band a trademark.

 

In upholding Mr. Tam’s right to obtain Federal registration for his band name, the Federal Circuit determined unconstitutional that portion of Section 2(a) of the Lanham Act which bars the registration of “scandalous” words. In doing this, the Federal Circuit Court of Appeals overruled its own thirty year-old holding and struck down a portion of the Federal trademark law that has been unquestioned since adopted in 1946.

 

The Federal Circuit reasoned that First Amendment jurisprudence had matured in 2015 to the point where the Patent and Trademark Office should not be accepting or rejecting marks for registration based upon a subjective contextual determination of offensiveness. Suffice to say, without repeating them here, that the Trademark Office pattern in disapproving some trademark applications and approving others has been highly situational.  Indeed, there are countless trademark registrations incorporating the word “slant” which the Trademark Office has found to be not objectionable, applying their analysis subjectively.

 

The decision in In re Tam found that the Trademark Office’s application or Section 2(a) “does more than discriminate on the basis of topic. It also discriminates on the basis of message conveyed…” (Opinion at 19). In summary, the anti-disparagement provision of Section 2(a) was found to be “viewpoint discriminatory on its face” (Opinion at 21).

 

The Federal Circuit also rejected positions arguing that issuance of a Federal registration was somehow approval or certification by the U.S. Government for the views expressed in the trademark.

 

In re Tam may not be the final word on this matter, since the U.S. Supreme Court is unlikely to avoid taking a look at the issue, given the sixty years that the statute remained unchallenged and the implications for First Amendment law.

 

For more information about this or any trademark or IP issues, please contact Fred Frawley (afrawley@eatonpeabody.com)

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