In re Tam, 808 F.3d 1321 (Fed. Cir. 2015)
The Federal Circuit recently held that Section 2(a) of the Lanham Act, that, among other restrictions, prohibits the registration of trademarks that "may disparage . . . persons, living or dead," violates the First Amendment because it constitutes viewpoint discrimination on the part of the government. This ruling conflicts with a recent decision by a Virginia district court upholding the cancellation of the Redskins' trademark on the grounds that it disparages Native Americans. Pro-Football, Inc. v. Blackhorse et al., 112 F.Supp.3d 439 (E.D. Va. 2015). That ruling is currently on appeal to the Fourth Circuit, potentially resulting in a circuit split that would be ripe for Supreme Court review.
In re Tam concerns the Asian American band The Slants' appeal from the United States Patent and Trademark Office's ("USPTO") refusal to register its mark THE SLANTS on the basis that the mark disparages Asians. To determine whether a mark is disparaging under Section 2(a), a trademark examiner considers: (i) the likely meaning of the matter in question, and (ii) if the meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. In this case, the trademark examiner found that THE SLANTS clearly referred to people of Asian descent and would be understood by a substantial composite of that group as an ethnic slur referring to the eye shape of many people of Asian descent. The trademark examiner therefore denied registration, and the Trademark Trial and Appeal Board affirmed, pointing to, among other things, dictionary definitions, the band's website, which used the name alongside a stereotypical image of an Asian woman, and record evidence of individuals and groups in the...
