Enter to open, tab to navigate, enter to select
Call for New Slant on Disparaging Marks: Federal Circuit
Practical Law Legal Update 2-609-5835 (Approx. 4 pages)
Call for New Slant on Disparaging Marks: Federal Circuit
by Practical Law Intellectual Property & Technology
| Published on 21 Apr 2015 • USA (National/Federal) |
In In re Tam, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) refusal to register THE SLANTS mark for an Asian-American band on the basis that the mark would be disparaging to Asians. Circuit Judge Moore, who authored the court's opinion, wrote a separate opinion questioning the constitutionality of barring registration of disparaging marks under Section 2(a) of the Lanham Act as imposing unconstitutional conditions on the exercise of free speech.
On April 20, 2015, the US Court of Appeals for the Federal Circuit issued an opinion in In re Tam, affirming the US Trademark Trial and Appeal Board's (TTAB) refusal to register the mark THE SLANTS for use by Simon Shiao Tam's Asian-American rock band in live performances (No. 2014-1203, (Fed. Cir. Apr. 20, 2015)).
In 2010, Tam filed an application to register the mark THE SLANTS for live performances by his musical band of the same name. The examining attorney refused to register the mark under Section 2(a) of the Lanham Act, finding the mark to consist of matter that may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols (15 U.S.C. § 1052(a)). After applying the two-part test formulated in In re Geller to determine whether the mark was disparaging, the TTAB affirmed the examining attorney's refusal, holding that the mark could not be placed on the Principal Register because the public would likely interpret the mark to refer to people of Asian descent, and people of Asian descent would likely find the mark offensive (751 F.3d 1355, 1358 (Fed.Cir.2014)). For more information on the TTAB's review of this case, see Legal Update, TTAB Affirms Section 2(a) Refusal to Register Derogatory Term.
On appeal to the Federal Circuit, Tam argued that the TTAB erred in finding the mark disparaging under Section 2(a), and that the statute was unconstitutional. In particular, Tam argued that Section 2(a) is unconstitutional on its face and as applied because it conditions a government benefit, trademark registration, on the relinquishment of his right of free speech. Tam also argued that:
- Section 2(a) is unconstitutionally vague.
- The USPTO's application of the statute is arbitrary and therefore results in a denial of due process.
- Tam was denied his right to equal protection under the laws because the fact that Tam and his band are of Asian descent impermissibly influenced the USPTO's finding that THE SLANTS mark is a derogatory reference to East Asians.
The Federal Circuit summarily rejected Tam's claim that the TTAB erred in finding the mark disparaging, finding that there was sufficient evidence before the TTAB to support the TTAB's conclusion that THE SLANTS would likely refer to people of Asian descent, who would likely find the term offensive.
Turning to Tam's constitutionality claims, the court relied on In re McGinley, which first addressed whether an appellant's First Amendment rights were violated when the USPTO refused to register the appellant's mark (660 F.2d 481 (C.C.P.A. 1981)). The US Court of Customs and Patent Appeals (the predecessor to the Federal Circuit) held that these rights were not violated because the refusal to register a mark does not prohibit an applicant's use of a mark, but only its registration (660 F.2d at 484).
Following In re McGinley, the Federal Circuit concluded that Tam's First Amendment rights were not violated by the USPTO's refusal to register THE SLANTS because:
- The TTAB follows the well-established two-part Geller test to determine whether a mark is disparaging, adopting a standard that is neither arbitrary nor otherwise in violation of procedural due process.
- Tam was provided with a full opportunity to prosecute his applications and to appeal the examining attorney's final rejections to the TTAB. For this reason also Tam was not deprived of due process of law.
- The language of Section 2(a) that prohibits registration of disparaging marks is sufficiently precise to provide notice to applicants and guidance to the USPTO and courts of the statute's requirements.
- The TTAB denied Tam's registration because he used the mark in a disparaging manner, not because he is Asian. The rejection therefore did not violate the Equal Protection Clause because there were nondiscriminatory reasons for denying the registration.
The Federal Circuit also noted that Tam's claims that other disparaging terms were registered were irrelevant because:
- Each application must be considered on its own merits.
- Even if other disparaging terms were registered in error, this fact does not require or justify registering Tam's mark.
Circuit Judge Kimberly A. Moore wrote a separate opinion in which she set out at length First Amendment arguments against the constitutionality of Section 2(a)'s bar against registering disparaging marks and urged the Federal Circuit to revisit In re McGinley's holding that this prohibition is constitutional because it only restricts an applicant's right to register, rather than use, an applied-for mark.
Update: On April 27, 2015, the Federal Circuit issued an order stating that it was vacating its April 20, 2015 three-judge panel decision and that it would sit en banc to decide whether the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violated the First Amendment. The court's decision was sua sponte and occurred before Tam sought review.