A recent Court of Appeals decision that could have an impact on the Washington Redskins trademark dispute about their team name, is covered in the following article by my law partner, Mitchell Stabbe, who specializes in trademark law.  He writes about a case where the Court determined that a trademark rule that has led to the denial or rejection of trademarks deemed to be disparaging was an unconstitutional infringement on Free Speech.  This is the first of what we hope will be many articles on this blog from Mitch and his team of trademark specialists: 

In a decision that could have a significant impact on the well-publicized dispute over the REDSKINS trademark, the US Court of Appeals for the Federal Circuit recently ruled that the prohibition against federal registration of disparaging trademarks violates the First Amendment and is unconstitutional.  The case involved an appeal from the denial by the Patent and Trademark Office (“PTO”) of an application by Simon Shaio Tam to register the mark THE SLANTS for an Asian-American band, which selected the name in order to make a statement about racial and cultural issues.  The PTO had found that, regardless of intent, the likely meaning of phrase THE SLANTS may be disparaging to a substantial composite of persons of Asian descent.

Each of the previous appeals affirmed the finding that the mark is disparaging, and held that the issue of constitutionality could not be addressed because of a binding precedent issued by the Federal Circuit in 1981.  That precedent could only be reversed if all of the Federal Circuit judges (as opposed to a panel of three judges, which decides most cases) ruled together.  The court agreed to consider the question whether the prohibition against disparaging marks is constitutional.  In a 9-3 ruling, the Federal Circuit reversed its own precedent and concluded that the statutory prohibition violates the First Amendment and is unconstitutional.  The court reasoned that, by denying registration to disparaging marks, the Government was targeting speech based on the content of the message conveyed by the mark, which is almost always a violation of the First Amendment requirement that the Government make no laws abridging freedom of speech.  Even though the lack of a federal registration does not limit the right to use a mark, the court ruled that denying registration would restrict freedom of speech by creating a disincentive to the adoption of disparaging trademarks because the markholders would be denied the “truly significant and financially valuable benefits” of registration.  (We will address those benefits in an upcoming post.)
Continue Reading Court of Appeals Rules that Prohibition Against Federal Registration of Disparaging Trademarks is Unconstitutional Restriction of Free Speech