Section 2 (a) of the Lanham Act, 1946, 15 U.S.C. Sec. 2 (a), which restricts the registration of trademarks found by the USPTO to be scandalous or disparaging, was determined to be unconstitutional on the basis of the First Amendment by  the Court of Appeals for the Federal Circuit in a case (In re Simon Shiao Tam-2014-1203), brought by “The Slants,” an Asian-American rock band.  [Background]

Mr. Simon Shiao Tam, as the owner of the mark, filed in 2011 a registration application for  “The Slants” (Serial No. 85-472044).  The USPTO examiner rejected the application on the basis that the applied for mark was disparaging under Section 2 (a)  because the word had a long history of being used in a derogatory way for people of Asian decent.  The examining attorney believed that people of Asian decent would take offense from the use of the applied for mark.  The rejection was upheld by the Trademark Trial and Appeal Board (TTAB.)

Mr. Tam appealed the TTAB’s decision to the Federal Circuit, which initially found in favor of the USPTO’s decision, concluding that the denial was not based on a constitutionally suspect race-based criterion, i.e., the applicant’s ethnicity, or the denial of his First Amendment rights.

In a major turn around, following a new hearing, the full panel of judges of the Federal Circuit concluded that because a trademark has two purposes, namely to identify the source of a product or service and as a form of expression, the USPTO’s rejection violated Mr. Tam’s First Amendment right of freedom of expression, thus he was entitled to registration. [Federal Circuit Opinion]

A similar issue was the subject of the Redskins’ challenge to cancellation by the USPTO of its federal registration, also on the basis of disparagement.  In light of the Slant’s decision, it appears that the Redskin’s argument may still has legs as it appeals to the Fourth Circuit the adverse ruling reached by a federal district court in Virginia.

Given the decision of the Federal Circuit and the pending decision of the Fourth Circuit, the constitutionality  of Section 2 (a) will remain of lively interest.  And, if there is a split between the circuits, the question may ultimately have to be decided by the Supreme Court.

In the meantime, the USPTO has taken note of the developments and has issued to trademark examiners revised Section 2(a) guidance. [New Guidance]  Does this action by the USPTO presage the likely fate of future enforcement of Section 2 (a)?  We will monitor the evolving situation and report back as this constitutionality battle unfolds.