Rock Band The Slants Wins First Amendment Appeal Over 'Disparaging' Trademarks

The Federal Circuit gives victory to The Slants.

Slants frontman Simon Tam has scored a big victory at a federal appeals court in his challenge to the U.S. Patent & Trademark Office's refusal of a trademark registration.

On Tuesday, the United States Court of Appeals for the Federal Circuit accepted Tam's contention that the USPTO's "Slants" refusal, done pursuant to a law against "scandalous, immoral, or disparaging marks," constitutes a violation of First Amendment rights. The decision provides massive encouragement to those like the Washington Redskins who are fighting on similar grounds. In fact, unless the U.S. Supreme Court decides to weigh in, it seems highly likely that the USPTO's decision to register the "Washington Redskins" will also not survive constitutional scrutiny.

In attempting to register "The Slants," Tam, an Asian-American, said he was attempting to "take ownership" of Asian stereotypes. After the USPTO refused to register, he went to an appeals court and was handed a loss thanks to a prior 1981 appellate ruling in McGinley that held that "the PTO's refusal to register appellant's mark does not affect his right to use it."

Tam was then successful in bringing the dispute for review en banc, before a wider panel of appellate judges at the Federal Circuit.

Today, Federal Circuit Judge Kimberly Ann Moore, who authored the prior ruling but had some reservations, now comes to a new conclusion.

"It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys," she writes. "That principle governs even when the government’s message-discriminatory penalty is less than a prohibition."

Moore continues by saying that words are powerful, and the courts have been slow to appreciate how trademarks fit in. The analysis is also informed by appreciation that trademarks have gone beyond commercial endeavors to attach themselves to expressive speech.

"The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks," she writes. "It cannot refuse to register marks because it concludes that such marks will be disparaging to others. 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."

The appellate judge does write in a footnote that the holding is limited to the constitutionality of the disparagement provision in the Lanham Act and might not touch on the immoral or scandalous provisions. As such, the USPTO can continue to defend refusals on other marks -- including the Redskins -- and future courts will have to decide whether to apply today's ruling more broadly.

The case drew friend-of-the-court briefs from many, from the ACLU to a coalition of adult film producers.

Here's the full opinion.