Disparagement Provision of Lanham Act | Kennedy Law, P.C.

Federal Circuit Rules Disparagement Provision of Lanham Act is Unconstitutional

Author: Stephen A. Kennedy

Date: 12/23/2015

The Court of Appeals for the Federal Circuit has issued its ruling in In re Tam. In a surprising move and with a 9-3 vote, the panel ruled that the Lanham Act’s disparagement provisions are unconstitutional because they constitute an impermissible restriction on speech. By permitting the Government to unilaterally determine which marks were disparaging or offensive, Section 2(a) permitted viewpoint discrimination in violation of the First Amendment’s free speech protections. Writing for the majority, Judge Moore states, “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks…It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation…amounts to viewpoint discrimination.” Because Section 2(a)’s disparagement provisions allow the government to “stifle the use of certain disfavored messages,” it did not survive a strict scrutiny analysis by the court.

 While the court noted that the exclusion of disparaging marks does not constitute a ban on free speech (mark owners may still use their marks under common law rights), it did deprive mark owners of federal trademark protections. This decision paves the way for The Slants, an Asian American rock band, to finally receive federal registration for their mark THE SLANTS. The band’s founder has been attempting to receive federal registration of the mark for the past six years.

A ruling on the Redskins case pending in the Fourth Circuit should occur next year. Although the Fourth Circuit will assuredly carefully scrutinize the Slants ruling, it is impossible to predict how the Fourth will weigh in on the issue.  Either way, the disparagement cases are headed to the Supreme Court.

Chelsie Spencer is a Senior Associate with the Dallas office of Kennedy Law, PC. She may be reached at 214-716-4345.

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