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 writer is Managing Partner Intellectual Property Logium
www.iplogium.com
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