Federal Circuit May Allow Offensive Trademarks

A usually obscure trademark law doctrine has been in the news more and more over the past few months. 15 U.S.C. 1052(a) forbids the federal registration of a trademark, if that mark would disparage or offend certain groups of people. It was this section of the Lanham Act that recently resulted in the cancellation of the Washington Redskins’ federal trademark registration. Now, a decision by a federal appeals court in another case, In re Tam, may result in the doctrine being overturned as unconstitutional, after the court agreed to hear a second appeal on whether the doctrine violated people’s freedom of speech.

In re Tam

In re Tam is a trademark registration case about an Asian-American rock band called “The Slants.” The group’s bassist, Simon Tam, attempted to register the name as a federal trademark, but the registration was refused on the grounds that the band’s name was a racial slur that was likely to offend a “substantial composite” of the group that it was referencing. The band, for their part, contended that their registration ought to be allowed because they were attempting to reclaim the slur and turn it into a positive term, an argument that has previously found traction at the Trademark Office.

The group appealed the ruling all the way up to a federal appellate court which still refused their registration. However, the court, of its own volition, chose to institute a process called an en banc rehearing to determine whether the inability to register offensive trademarks was constitutional. En banc rehearings are processes that appellate courts use when they want to overturn their old legal precedent or change some rule. Ordinarily, appellate court cases are heard by a three person panel made up of judges who sit on the court. In an en banc hearing, the entirety of the court sits in on the case in order to decide the issue.

The Legal Controversy

The legal issue for constitutionality relates to something called the unconstitutional conditions doctrine. At its heart, this doctrine states that government benefits may not be denied based on unconstitutional conditions such as a person’s engaging in speech protected by the First Amendment. It is important to note here that the Supreme Court has repeatedly stated that hate speech or offensive speech is eligible for First Amendment protection, so that is not likely to be a focus of the argument.

People favoring the continued refusal of offensive marks put forward a counterargument that 1052(a) does not actually interfere with a person’s freedom of speech. This is because it merely prohibits registration of the mark. While registration confers a variety of benefits, people may still use unregistered marks and may even enforce them in court, so the argument goes that speech is not interfered with because the group may still use the name, just not with the full benefit of trademark registration. Ultimately, such a decision will be up to the federal appellate court, and may even end up at the U.S. Supreme Court at some point.

If you are involved in a trademark dispute and have questions about your rights, contact a Florida trademark law attorney at Pike & Lustig, LLP today to learn more about your legal options.