Reconsidering First Amendment Challenges to Trademark Disparagement Refusals

On April 20, 2015, a Federal Circuit panel rejected a first amendment challenge to a refusal to register the trademark, THE SLANTS, which a trademark examiner deemed disparaging under 15 U.S.C. § 1052(a). A mere seven days later, the Federal Circuit voted to vacate that decision and rehear the argument en banc. The Federal Circuit has long held that, because a refusal to register does not prevent the trademark owner from actually using the mark, the First Amendment is not implicated. In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981). The Federal Circuit’s decision to reconsider its well-settled, though often scrutinized, precedent is interesting, especially in light of the recent cancellation of the Washington Redskins trademark on the same basis.

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