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Disparagement Provision of Lanham Act Held Unconstitutional By Federal Circuit

The U.S. Court of Appeals for the Federal Circuit held Lanham Act Section 2(a) to be unconstitutional in a case concerning a trademark application for THE SLANTS in connection with “Entertainment in the nature of live performances by a musical band.” In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015). The Trademark Examiner had refused to register the mark, finding the term “slants” had “a long history of being used to deride and mock a physical feature” of people of Asian descent.

The majority opinion written by Judge Moore noted that although disparaging marks may “convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech.”

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.

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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. 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.

In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015).

In dissent, Judge Dyk noted that no case before had "imposed an obligation on the government to subsidize offensive, commercial speech."

Judge Lourie's dissent also argued that the court "should not further the degradation of civil discourse by overturning our precedent that holds that the First Amendment is not implicated by § 2(a)’s prohibition against disparaging trademarks," and that "the refusal of the USPTO to register a trademark is not a denial of an applicant’s right of free speech" because the markholder may still generally use the mark.

A dissent by Judge Reyna argued that "Section 2(a) should survive intermediate scrutiny because it is only an 'incidental restriction on First Amendment freedom [that] is no greater than is essential to the furtherance of the governmental interest' in the orderly flow of commerce" (citation omitted).