Federal Circuit: U.S. Cannot Deny Trademarks Over Offensive Names

Dec 22, 2015 10:42 AM PST

WASHINGTON — In an appellate decision of significant importance for the adult entertainment and sex toys and novelties industries, the U.S. Court of Appeals for the Federal Circuit ruled today that the U.S. government can’t deny trademarks over offensive names.

The case at hand involved the trademark registration of "The Slants," the name of a Portland, Ore., pop-rock band whose founders and members are Asian Americans.

Upon Simon Tam’s registration of his band’s trademark, the examining attorney at the U.S. Patent and Trademark Office found the mark The Slants disparaging and declined to register it.

The Trademark Trial and Appeal Board later affirmed the examiner’s decision. But later, the Federal Circuit agreed to rehear the case en banc after it originally sided with the examining attorney.

At issue in the The Slants case was § 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office to deny or cancel a trademark if it is "disparaging" of persons, institutions or national symbols.

The Federal Circuit, 10-2, ruled today that the band’s name is private speech and therefore protected by the First Amendment. The government, the appeals court decided, has no business trying to regulate it.

"The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks," Federal Circuit Judge Kimberly Ann Moore wrote. "It cannot refuse to register marks because it concludes that such marks will be disparaging to others.

“The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional,” she said.

“Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech."

Moore, in a footnote, said that the ruling was limited to the constitutionality of the disparagement provision in the § 2(a) and might not be applicable on the “immoral and scandalous” provisions.  

Industry attorney Marc Randazza of Randazza Legal Group authored an amicus brief on behalf of the First Amendment Lawyers Association over The Slants case this past summer.

Randazza told XBIZ today that in the brief, "we argued that all of § 2(a) should be struck down, including its 'immoral and scandalous’ clause. That is the clause that most affects the adult entertainment industry."

“The court did not throw that part out explicitly, but what it did was explicitly overrule the case that the USPTO relies on when it rules against adult entertainment companies,” Randazza said. “Further, the order seems to invite a challenge to the immoral and scandalous clause.  

“Therefore, I think this is a great decision for all,” he said.  

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