Does the Bar on Registration of Disparaging Marks Violate the First Amendment?

The Slants are an all-Asian American rock band founded by Simon Young (a/k/a Simon Tam) in 2006. All members of the current lineup are of Asian descent and they are well known for their involvement with the Asian American community, and fighting racism and stereotypes.

The Slants were denied a federal trademark registration for THE SLANTS by the USPTO, which determined that the mark was disparaging and thus unregistrable under Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), which bars the registration of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, does any of the following: (1) disparages them, (2) falsely suggests a connection with them, (3) brings them into contempt, or (4) brings them into disrepute. The TTAB affirmed the denial of registration and, just last week, the Federal Circuit affirmed the same, holding that the mark is disparaging, and that Section 2(a) is constitutional. In addition to arguing that the TTAB had erred in denying registration, Mr. Tam had challenged the constitutionality of § 2(a) to the Federal Circuit Court of Appeals.

In an interesting turn of events, Judge Kimberly Ann Moore, who wrote for the Court, also filed "additional views." Judge Moore criticized a 1981 decision by the U.S. Court of Customs and Patent Appeals that had found the Lanham Act's disparagement provision constitutional. In re McGinley, 660 F.2d 481 (CCPA 1981). Judge Moore raised several interesting points as to why the reasoning underlying the decision in McGinley is outdated, and how Section 2(a) abridges protected speech, explaining that it is "unquestionably true that trademarks are protected speech under Supreme Court commercial speech jurisprudence." Judge Moore also made a sua sponte request for a poll on whether to consider this case en banc.

Just yesterday, the Court vacated the panel's decision, reinstated the appeal, and ordered the case to be heard en banc to answer the following question: "Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?"

Additional media coverage: The Slants Get Hearing on Rude Trademark Issue Facing Redskins