Bar on the Registration of a Disparaging Trademark under Lanham Act and the First Amendment Disparaging Mark
A disparaging mark is a mark which “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” Geller, 751 F.3d at 1358. To determine if a mark is disparaging under § 2(a), a trademark examiner of the PTO considers:
(1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
(2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
Disparaging Marks and United States Trademark Law
The Lanham Act (United States Trademark Law) was enacted in 1946 to provide a national system for registering and protecting trademarks used in interstate and foreign commerce. The Lanham Act makes registration very significant by conferring important legal rights and benefits on trademark owners who register their marks.
Section 2(a) of the Lanham Act envisages few restrictions on the registration of certain kinds of trademarks. It bars the registration of scandalous, immoral, or disparaging marks. 15 U.S.C. § 1052(a).
The bar on registration of a trademark under Lanham Act extends to the Trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”
Section 2(a) contains proscriptions against trademarks based on expressive nature of the content, such as the ban on marks that may disparage persons or are scandalous or immoral. A disparaging mark is a mark which “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.”
The relevant provision of the Lanham Act 1946 is as below:
- 2 (15 U.S.C. § 1052) Trademarks registerable on the principal register; concurrent registration
“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.”
First Amendment United States Constitution
The supreme Law of the United States of America is the United States Constitution which came into force in 1789. The US constitution has been amended twenty-seven times. The First Amendment was adopted on December 15, 1791. The First Amendment guarantees the freedom of religion, expression, assembly, and the right to petition. The freedom of expression is guaranteed by the First Amendment prohibits Congress from restricting the press or the rights of individuals to speak freely.
Below is the text of the First Amendment:
“Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievances.”
Is § 2(a) Lanham Act 1946 Unconstitutional and Conflicting to the First Amendment?
Our opinion on the issue is as below:
“Disparagement provision of § 2(a) Lanham Act 1946 bar on registration of disparaging marks in 15 U.S.C. § 1052(a) is certainly violative of the First Amendment, therefore, the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment. The Government can legislate on “Intent of Speech/Expression” but “Speech/Expression” must be unfettered in view of First Amendment. First Amendment does not allow the Government to declare a kind of words or set of expressions as disparaging. The usage of certain words may be disparaging but Government is not allowed to stop its usage/speech and expression under the law according to First Amendment.”
Recent decision of the United States Court of Appeals for the Federal Circuit dated December 22, 2015 In Re Simon Shiao Tam Appeal Number: 2014-1203 declaring §2(a) Lanham Act Unconstitutional and against the First Amendment.
Prior to this decision the most important decision of the United States Court of Appeals for the Federal Circuit on this issue was In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981) wherein the court held that the refusal to register a mark under § 2(a) does not bar the applicant from using the mark, and therefore does not implicate the First Amendment.
The entirety of the McGinley analysis was: “With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.”
In subsequent cases, panels of United States Court of Appeals for the Federal Circuit relied on the holding in McGinley See In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012); In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003); In re Mavety Media Grp., 33 F.3d 1367, 1374 (Fed.Cir. 1994). For more than 30 years this interpretation of law prevailed in the United States.
However this judgment In Re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981) and other precedents have been overruled by the United States Court of Appeals for the Federal Circuit vide order dated December 22, 2015 In Re Simon Shiao Tam Appeal No. 2014-1203. The most important abstracts and portions of this most remarkable judgment of the Court of Appeal for the Federal Circuit dated December 22, 2015 In Re Simon Shiao Tam, which has been decided after sua sponte ordered rehearing en banc, are as below:
Opinion for the court was filed by Circuit Judge Moore, in which Chief Judge Prost and Circuit Judges Newman, O’Malley, Wallach, Taranto, Chen, Hughes, and Stoll joined.
Opinion concurring in part and dissenting in part filed by Circuit Judge Dyk, in which Circuit Judges Louries and Reyna join with respect to parts I, II, III, and IV.
On November 14, 2011 Mr. Tam filed application to register the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band” The examiner refused to register mark, finding it likely disparaging to “persons of Asian descent” under § 2(a).
The Board affirmed the examiner’s refusal to register the mark. At this the Applicant Mr. Tam appealed, arguing that the Board erred in finding the mark disparaging and that § 2(a) is unconstitutional. On appeal The United States Court of Appeals for the Federal Circuit affirmed the Board determination that the mark is disparaging however the Panel sua sponte ordered rehearing en banc on the issue of that § 2(a) is unconstitutional and asked the parties to file briefs on the issue: Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?
After completion of its hearing the decision of the court held § 2(a) Lanham Act as unconstitutional. The most relevant and important parts of the decision are quoted as below:
“Federal trademark registration brings with it valuable substantive and procedural rights unavailable in the absence of registration. These benefits are denied to anyone whose trademark expresses a message that the government finds disparages any group, Mr. Tam included. The loss of these rights, standing alone, is enough for us to conclude that § 2(a) has a chilling effect on speech. Denial of federal trademark registration on the basis of the government’s disapproval of the message conveyed by certain trademarks violates the guarantees of the First Amendment.”
“The government admits that any message-based regulation of copyrights would be subject to the First Amendment. We agree, and extend the government’s reasoning to § 2(a)’s message-based regulation of trademarks. These registration programs are prototypical examples of regulatory regimes. The government may not place unconstitutional conditions on trademark registration. We reject the government’s argument that it is free to restrict constitutional rights within the confines of its trademark registration program.”
“We conclude that the government has not presented us with a substantial government interest justifying the § 2(a) bar on disparaging marks. All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive. This is not a legitimate interest. With no substantial government interests, the disparagement provision of § 2(a) cannot satisfy the Central Hudson test. We hold the disparagement provision of § 2(a) unconstitutional under the First Amendment”
“CONCLUSION: Although we find the disparagement provision of § 2(a) unconstitutional, nothing we say should be viewed as an endorsement of the mark at issue. We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities. Even Mr. Tam, who seeks to reappropriate the term “slants,” may offend members of his community with his use of the mark. See Br. of Amici Curiae Nat’l Asian Pacific Am. Bar Ass’n 3, 5. But much the same can be (and has been) said of many decisions upholding First Amendment protection of speech that is hurtful or worse. Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate.” Snyder, 562 U.S. at 461. The First Amendment protects Mr. Tam’s speech, and the speech of other trademark applicants.”
“We hold that the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.”
This judgment has changed the scenario of Disparaging Marks in United States and the next important question is how the Future of such marks shall be decided by the Supreme Court.
The Author is the Managing Partner Intellectual Property Logium