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What the Fed. Cir.'s Slants Decision Could Mean for TM, Redskins

Under the Lanham Act, the U.S. Patent and Trademark Office can't register "scandalous, immoral, or disparaging marks." That provision has been used to strike down the trademark for the Washington Redskins and to deny trademark protection to the all-Asian "Chinatown dance rock" band (and nutrition bar sponsors) The Slants.

The court upheld the USPTO's denial of trademark protection to The Slants in April, but reversed course on Tuesday, ruling en banc that the Lanham Act's "disparaging marks" prohibition is unconstitutional viewpoint discrimination. The ruling could have major impacts not just for The Slants and the Redskins, but for trademark law as a whole.

Disparage Away, Trademark Registrants

The Slants had claimed that their name was selected in order to "take ownership of Asian stereotypes." In choosing a provocative title meant to push buttons or reassert control over a name, The Slants join a long list of other musical predecessors such as the rap group N.W.A. and the gay hardcore band Limp Wrist. The name was, the group claimed, protected free speech.

The Federal Circuit originally wasn't convinced. The majority in the circuit's April ruling dismissed The Slants' First Amendment claims in one brief paragraph, finding them foreclosed under Fed. Cir. precedent, In re McGinley. Despite continued criticism by some, that precedent has been relied on consistently to deny trademark protection to brands such as Koran Wine, Porno Jesus and, more recently, the Redskins.

Refusing the benefit of a trademark doesn't limit someone's speech, the court found, nor does it affect a registrant's First Amendment right to use a particular mark -- it simply withholds the benefit of trademark protection.

Judge Kimberley A. Moore dissented, arguing that it was time for the court to revisit In re McGinley, which "held without any citation to legal authority in just a few sentences" that the Lanham Act's disparagement provision "does not implicate the First Amendment." The Federal Circuit took her up on her invitation to rehear the case en banc and agreed with her conclusions -- the prohibition was unconstitutional.

Disparaging Speech Is Still Protected Speech

The money quote comes right at the opening of Judge Moore's en banc majority opinion, joined by eight other Federal Circuit judges:

Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. IT cannot refuse to register marks because it concludes that such marks will be disparaging to others.

The Lanham Act's disparagement provision is viewpoint discrimination which fails to withstand strict scrutiny. The provision isn't saved by the commercial speech doctrine, which generally denies full free speech protection to advertising and similar speech. Here, it's not the commercial nature of the speech that the government is basing its actions on, it's the disparaging viewpoint the speech expresses.

Onwards to the Supreme Court?

That means The Slants can have their trademark. But the Redskins? Not exactly. It was the Eastern District of Virginia that invalidated the Redskin's trademark under the same provisions the Fed. Cir. has now found unconstitutional. The E.D. Va. is part of the Fourth Circuit and the Federal Circuit's ruling is, obviously, not binding in that court, which is currently hearing the Redskin's appeal.

But it could be influential, as the Federal Circuit's opinion makes many of the same points the Redskins have argued. Should the Fourth decide the question differently, the split between the two circuits would greatly increase the chance that the Supreme Court will agree to hear the case, if and when the government appeals.

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