On December 22, 2015, the US Court of Appeals for the Federal Circuit, ruling en banc, reversed over half a century of precedent and ruled unconstitutional the Lanham Act provision barring the registration of disparaging marks (In re Tam, (Fed. Cir. Dec. 22, 2015); 15 U.S.C. §1052(a)). Acknowledging that its decision may result in the wider registration of offensive marks, the Federal Circuit nevertheless struck down a portion of Lanham Act Section 2(a) as an unlawful regulation of speech under the First Amendment.

For more details on this decision see Legal Update, Lanham Act Provision Prohibiting Federal Trademark Registration for Disparaging Marks is Unconstitutional: Federal Circuit. For more on the history of In re Tam, see Legal Updates, Call for New Slant on Disparaging Marks: Federal Circuit and TTAB Affirms Section 2(a) Refusal to Register Derogatory Term.

This long-awaited decision is significant, as courts and the Trademark Trial and Appeal Board (TTAB) have long used Section 2(a) of the Lanham Act to prevent the registration of slurs, insults, and other potentially offensive matter.

Perhaps most notably, the TTAB relied on Section 2(a) when it cancelled Pro-Football, Inc.'s controversial REDSKINS marks, a decision that the US District Court for the Eastern District of Virginia affirmed last year (see Pro-Football, Inc. v. Blackhorse, (E.D. Va. July 8, 2015)). An appeal in that case is pending before the US Court of Appeals for the Fourth Circuit which, though not bound by the Federal Circuit's In re Tam decision, must consider it.

For more on the decisions in Pro-Football, Inc. v. Blackhorse, see Legal Updates, District Court Affirms TTAB's Cancellation of REDSKINS Trademark Registrations and Finding Disparagement, TTAB Orders Cancellation of Six REDSKINS Trademark Registrations.

The US Supreme Court is likely to eventually rule on the constitutionality of Section 2(a) and the resulting determination may have broad implications on trademark registrability, including on the sister provisions in 2(a) that proscribe registration of marks that include "immoral, deceptive, or scandalous matter" (see 15 U.S.C. §1052(a)).

In the meantime, Practical Law's Intellectual Property & Technology resources continue to provide up-to-date guidance on trademark topics including:

Immediately after the In re Tam opinion, Practical Law's attorney editors updated the following Practice Notes and Checklist to reflect the Federal Circuit's decision and to ensure the accuracy of these resources: