Yesterday the Federal Circuit issued its decision in In re Tam, an appeal filed by a musician whose application to register the mark THE SLANTS had been refused registration on the ground that it was disparaging to Asian Americans. The Trademark Trial and Appeal Board (TTAB) relied on the same provision to cancel the registrations for the REDSKINS trademarks owned by the Washington D.C. NFL franchise. The applicant in Tam appealed, arguing that the provision violated the First Amendment. The Federal Circuit agreed and struck down the provision as unconstitutional.
The specific provision at issue is Section 2(a) of the Lanham Act, codified at 15 U.S.C. Section 1052. The provision provides, in pertinent part:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute[.]
The decision – all 105 pages – presents a number of interesting legal issues to explore. We’ll analyze the substance of the decision in the coming days, weeks, and months. However, the most interesting aspect is not what the decision says, but where the decision may go. The In re Tam decision directly conflicts with the Eastern District of Virginia ruling in Pro-Football v. Blackhorse, which upheld the TTAB’s ruling cancelling the REDSKINS trademark.
In Blackhorse, the court concluded that the provision did not implicate the First Amendment because a lack of registration does “not burden, restrict, or prohibit [the] ability to use the marks.” However, the Federal Circuit disagreed. It concluded that the denial of a registration “creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging.” The Blackhorse court also found that the registration of trademarks constituted government speech, making it exempt from First Amendment challenges. The court reasoned that, in denying registration to disparaging marks, the Trademark Office is “exercising editorial discretion.” The Federal Circuit disagreed, instead concluding that the issuance of registrations was merely a regulatory activity: processing trademark applications into registrations. The Washington Redskins have appealed the district court’s decision to the Fourth Circuit.
Given that the Tam decision invalidates a federal statute, there is a good chance that the Supreme Court will decide to review the decision. However, a review will be all but guaranteed if the Fourth Circuit upholds the District Court’s decision, resulting in a circuit split. That case is still in the briefing stage and no oral arguments have yet been scheduled. As a result we’re not likely to have a decision until the fall of 2016 at the earliest. It’s going to be harder that waiting to open Christmas presents…