Lanham Act Disparagement Provision Held Unconstitutional

Cutting to the chase, because this is a noteworthy decision, but many people are busy getting ready for the holidays and might appreciate receiving the result up front.

We hold that the disparagement provision of Lanham Act § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

(Opinion page 62).

The USPTO is prohibited from registering scandalous, immoral, or disparaging marks by the Lanham Act, §2(a), also known as 15 U.S.C. §1052(a).  Simon Shiao Tam leads the Asian-American dance-rock band The Slants.  Twice Tam filed a trademark registration application for the mark THE SLANTS and was twice refused by the USPTO on the basis that the USPTO examiner found the mark to be disparaging to people of Asian descent.  Tam appealed to the Trademark Trial and Appeal Board.  The Board affirmed the examiner’s refusal to register the mark.  Tam appealed to the Federal Circuit.  A Federal Circuit panel affirmed the Board’s decision.  On its own initiative, the Federal Circuit ordered a hearing en banc.  The Federal Circuit en banc ruled that §2(a) of the Lanham Act, relied on by the UPSTO and Federal Circuit panel in rejecting Tam’s trademark registration application, is unconstitutional.

Continue reading “Lanham Act Disparagement Provision Held Unconstitutional”