On April 20, 2015, a Federal Circuit panel denied trademark registration for an Asian-American rock group’s name, the Slants, on a disparagement basis, because the name is racially disparaging.

What is a Disparagement Basis for Trademark Registration Rejection?

Trademark law denies registration to marks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Federal courts and the Trademark Trial & Appeal Board have upheld denials of many trademarks on a “disparagement” basis. The denial of registration for the Washington Redskins name, which is currently on appeal, is one recent example, and this ruling probably holds significance for that pending case.

Freedom of Speech or Disparagement?

However, in a concurring opinion, one judge argued that such denials violate the First Amendment because they are a content-based restriction on free speech. Although the judge concurred, citing the validity of case precedent on the issue, she argued the court should revisit that precedent and overrule it under the “unconstitutional conditions” doctrine, which states that “even though a person has no ‘right’ to a valuable governmental benefit … [i]t may not deny a benefit to a person on a basis that infringes his constitutionally protected interests—especially, his interest in freedom of speech.”

The judge further argued that trademarks are private speech, rather than government speech. Denying a trademark because it is disparaging involves the denial of government benefits on the basis of the speech’s content. And the government does not have a substantial interest “that would justify the PTO’s refusal to register disparaging marks.”

First Amendment jurisprudence has evolved significantly since the Federal Circuit initially held that trademarks could be denied on a “disparagement” basis. Although overturning this holding would require an en banc ruling from the Federal Circuit or a Supreme Court ruling, some aggrieved party may eventually receive a ruling on this point in the coming years.

Sources: http://www.washingtonpost.com/news/volokh-conspiracy/wp/2015/04/20/federal-circuit-no-trademark-registration-for-asian-american-band-called-the-slants-one-judge-argues-such-denials-violate-the-first-amendment/ http://www.reuters.com/article/2015/04/20/us-music-slants-trademark-idUSKBN0NB28L20150420

For more information on this topic, please visit our Trademark and Brand Management service page.

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