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.
The underlying case involved the attempted registration of the mark THE SLANTS by the front man for an Asian-American dance rock band of the same name. The examining attorney determined that the mark was disparaging to people of Asian decent and refused to register it. The Trademark Trial And Appeal Board (TTAB) affirmed the refusal. The applicant appealed to the Federal Circuit.
Section 2(a) of the Lanham Act provides that the USPTO may refuse to register a trademark that “[c]onsists of or compromises immoral, deceptive or scandalous matter; or matter which may disparage or falsely suggest a conection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The applicant challenged both the TTAB’s determination that the mark was disparaging, as well as the constitutionality of § 2(a) under the First Amendment.
Based upon McGinley, the panel conclusively rejected the applicant’s argument. However, in a concurring opinion, Judge Moore stated that “[i]t is time for this Court to revist McGinley’s holding on the constitutionality of § 2(a),” concluding that § 2(a) denied applicants access to the “benefits provided by the Lanham Act, which enhance the value of a mark.” Judge Moore referenced several of those benefits:
- “[A] right to exclusive nationwide use of that mark where there was no prior use by a party other than the markholder.”
- “A markholder may sue in federal courts to enforce his trademark, and he may recover treble damages if he can show infringement was willful.”
- A registered trademark owner “may also obtain the assistance of U.S. Customs and Border Protection in restricting importation of infringing or counterfeit goods;” and
- A registered trademark owner may “prevent ‘cybsersquatters’ from misappropriating his domain name.”
Presumably, in light of Judge Moore’s concurring opinion, the Federal Circuit agreed to vacate the panel opinion for the limited purpose of reconsidering the first amendment implications of disparagement refusals. Moore’s concurring opinion is quite compelling, and cites to substantial changes in First Amendment jurisprudence since the McGinley decision over 30 years ago. The Court’s decision to reconsider the issue is not necessarily predictive of the ultimate outcome of the case, however. Moreover, this issue could ultimately be one headed for the Supreme Court.
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