• Finding Disparagement Law Unconstitutional, Court Leans Toward the Slants
  • August 4, 2016 | Author: Timothy J. Lockhart
  • Law Firm: Willcox & Savage, P.C. - Norfolk Office
  • In a ruling that could lead to a U.S. Supreme Court decision on the issue, the Court of Appeals for the Federal Circuit recently found that the prohibition against registering disparaging marks violates the First Amendment and is therefore unconstitutional. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). After an en banc hearing, the court vacated the ruling of the Trademark Trial and Appeal Board that the mark THE SLANTS disparages people of Asian descent and is therefore unregisterable for use with “entertainment in the nature of live performances by a musical band” named “The Slants.”

    Section 2(a) of the Trademark Act prohibits the registration of marks that are considered disparaging. 15 U.S.C. § 1052(a). A disparaging mark is one that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” In re Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014) (dealing with STOP THE ISLAMISATION OF AMERICA) (alterations omitted), cert. denied, ---U.S. ---, 135 S. Ct. 944 (2015). To determine whether a mark is disparaging, examining attorneys at the U.S. Patent and Trademark Office (USPTO) consider (1) the likely meaning of the mark in question as used with the relevant goods or services and (2) whether that meaning may be disparaging to a substantial composite of identifiable persons, institutions, beliefs or national symbols. Trademark Manual of Exam. Proc. § 1203.03(b)(i) (Jan. 2015 ed.) (citing Geller at 1358).

    The prohibition against the registration of disparaging marks has been invoked with respect to, among others, MORMON WHISKEY, DON’T BE A WET BACK, and, perhaps most notably, REDSKINS (a ruling now on appeal in the Fourth Circuit). Here, both sides conceded that THE SLANTS reflects a racial stereotype. The court noted the mark is derived from an ethnic slur for Asians and that Simon Shiao Tam, the Asian American “front man” for the rock group, had chosen the band’s name for that reason. The court quoted Mr. Tam as saying, “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them.”

    The court said that the disparagement prohibition discriminates on the basis of message and regulates the expressive aspects of marks, not merely their function as commercial speech. Thus, the court held, the prohibition is subject to the strict scrutiny review applicable to viewpoint discrimination even though it bans no speech and regardless of the government-speech or government-subsidy doctrines. The court’s analysis focused on the importance of the benefits of federal trademark registration and the uncertainty of state or common-law protection for marks that are not registerable with the USPTO.

    The court drew a distinction between a trademark registration and state-produced specialty license plates, which the Supreme Court has held are government speech. Walker v. Texas Div., Sons of Confederate Veterans, Inc., ---U.S. ---, 135 S. Ct. 2239 (2015). The court also drew a distinction between government subsidies for things such as medical care or tax exemptions and the government’s issuance of a trademark registration, which, the court said, is part of a “regulatory regime, not a government subsidy program.”

    In addition, the court held that Section 2(a) is unconstitutional even under the intermediate-scrutiny standard applicable to commercial speech. The court said that because the disparagement provision of Section 2(a) does not address misleading, deceptive, or unlawful marks, only a “substantial government interest” could justify the provision. “All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive,” the court said, and because “[t]his is not a legitimate interest,” Section 2(a) cannot satisfy the intermediate-scrutiny test laid out in the commercial-speech case of Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n, 447 U.S. 557 (1980). Thus, although it acknowledged that its decision could lead to “the wider registration of marks that offend vulnerable communities” (including, in this case, the Asian American community), the court held that Section 2(a) is unconstitutional.

    The one partially dissenting and two dissenting opinions said that trademarks are commercial speech and, as such, are not entitled to the higher degree of protection provided to political speech. One dissent said that a term such as THE SLANTS is political speech as well as a trademark and therefore should not be denied registration because it is disparaging. Another dissent pointed to the long history-almost 70 years-of Section 2(a) and asked rhetorically, “Is there no such thing as settled law, normally referred to as stare decisis?”

    The executive branch of the federal government has until late March to decide whether to ask the Supreme Court to review the decision. Even if the government does not seek an appeal, however, the Court of Appeals for the Fourth Circuit could reach a different conclusion about Section 2(a) in the REDSKINS litigation, thereby leading to a circuit split and a possible appeal to the Supreme Court. In either event, and perhaps especially in view of the effect the late Justice Antonin Scalia’s absence may have on the court’s vote, trademark owners and practitioners as well as the USPTO will be on high alert as to which way the highest court may “slant.”