As predicted in our November 13, 2014 post, “Flag On The Play”, the United States Court of Appeals for the Federal Circuit (CAFC) has held that the United States Patent and Trademark Office (USPTO) stuck its “subjective nose” so far into trademark owners’ choices of trademarks that the U.S. Constitution has been violated. In re Tam, No. 2014-1203 (FED. CIR. DEC. 12, 2015). Specifically, the CAFC has ruled that section 2(a) of the Lanham Act (15 U.S.C. § 1051 (1946)), which prevented the registration of disparaging or potentially offensive marks, is unconstitutional.
In re Tam involved Simon Shiao Tam attempting to register the name of his band, The Slants, as a federally registered trademark. The Examining Attorney, citing to §2(a), refused registration, and Mr. Tam appealed. His first stop was the Trademark Trial and Appeal Board (TTAB), which affirmed the Examining Attorney’s decision. His second stop, the CAFC, also initially affirmed the USPTO’s determinations. Mr. Tam then sought en banc review of that decision by a majority of the sitting CAFC judges.
The CAFC, en banc, held: “The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.” Previously, the USPTO could reject a trademark application if the proposed mark “may disparage … persons … institutions, beliefs, or national symbols.” The CAFC found §2(a)’s disparagement restrictions an impermissible “viewpoint-based” regulation of speech by the government.
In essence, the CAFC found what we predicted and believed to be correct; that is, §2(a) gave the USPTO (via its most junior of USPTO representative, the Examining Attorney), the power to reject an application because of his or her unique view of what was and was not “disparaging.”
This glaring flaw was brought into sharp focus with the Redskins decision, where an incredibly small number of Native American “redskins,” sought to and did, have the Washington Redskin’s Trademark Registrations canceled. At the time of the Redskin decision, we opined that the decision was wrong because: (a) the Redskins trademark is used to celebrate and evoke the proud history of Native American “redskins,” a history this country honors by use of that trademark; (b) “disparagement” is an impossible moving target if interpreted in a politically correct manner, guided by then-current subjective tastes and changing morays; and (c) simply stated, almost nobody perceives Redskins, Vikings®, Warriors®, Giants®, Yankees®, Fightin’ Irish®, Patriots® etc., as disparaging, because let’s face it, we don’t name our sports teams the Dopes, the Losers, the Cheaters or the A-holes.
What most troubled us was the fact that 5 native Americans could get the Redskins registrations canceled. What is to stop Scandinavian Americans from cancelling the Vikings®, veteran Americans from cancelling the Warriors®, tall Americans from cancelling the Giants®, English Americans from cancelling the Yankees® (1683, a disparaging name used by Dutch settlers in New Amsterdam (New York) against English colonists in neighboring Connecticut), Irish Americans from cancelling the Fightin’ Irish, and the Daughters of the American Revolution from cancelling the Patriots?
Remarkably, and hammering home the subjective nature of an Examining Attorney’s interpretation, the USPTO has allowed positive messages, like “CELEBRASIANS” and “ASIAN EFFICENCY,” but rejected what they thought were negative messages, like “THE SLANTS.”
The CAFC also addressed the “Chilling Effect” the disparaging restriction has on trademark applicants. Because federal trademark registration gives “truly significant and financially valuable benefits upon markholders,” a bar on registration creates a strong disincentive for applicants to choose a mark that “may disparage.”
This was a smart decision by the CAFC and a decision which will help the Washington Redskins’ effort to overturn the cancellation of its trademark Registrations. As noted above, the Redskins’ name was conceived to celebrate Native Americans not to insult or disparage them; it was meant to embody their warrior spirit and the spirit of a culture for which this country is proud. In Mr. Tam’s words, to the extent it matters (which it should not), he named his band “The Slants” for a positive and productive reason; i.e., to destroy the “slant” stereotype.
We leave for another day whether a similar treatment will be applied to the “scandalous” and “immoral” standards set forth in §2(a). We do note that in a climate of political correctness standards of any kind are difficult to articulate and defend. We do believe there should be boundaries on what trademarks may be Registered, but the rationale of In re Tam brings all such standards into question. The days of Potter Stewart’s famous definition of obscenity —“I know it when I see it”—seems like a million years ago.
We do wonder if after this ruling the USPTO could reject applications that are intentionally and purposefully meant to offend a group of people. For example, what if a team actually did attempt to use and register The A-holes? Could the USPTO reject it? Possibly, but not because it disparaged a**holes. Perhaps all of this should be left to the public to police speech they don’t want to hear by choosing to do or not to do business with the disparaging, scandalous or immoral – slippery concepts.
Authored by Christopher McHattie and Sean E. Sanders
Photo courtesy of Anthony Pidgeon/Redferns