Court Considering Constitutionality of Section 2(a) of the Lanham Act

The USPTO is allowed to reject the registration of a trademark that is immoral, scandalous, or disparaging, according to Section 2(a) of the Lanham Act.

In a landmark move, the Federal Circuit has decided to examine the constitutionality of Section 2(a) of the Lanham Act in the case of In re Shiao Tam, 2015 U.S. App. LEXIS 6840 (Fed. Cir. Apr. 27, 2015).

It is an interesting move, considering that the week before the Federal Circuit affirmed the USPTO’s rejection of Mr. Tam’s application to register the mark “THE SLANTS”. According to the applicant, this is the name of his Asian-American dance rock band that is known for its intentional and controversial use of Asian stereotypes in its lyrics and imagery in order to “weigh in on cultural and political discussions about race and society.” The argument made by Mr. Tam was that the rejection was a violation of his First Amendment right to freedom of speech.

The court rejected the argument that Section 2(a) is unconstitutional under the First Amendment, and explained that this argument is “foreclosed by our precedent” in In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). In re McGinley dismissed a First Amendment challenge to Section 2(a) and held that “the USPTO’s refusal to register appellant’s mark does not affect his right to use it” and “that no conduct is proscribed, and no tangible form of expression is suppressed” when an applicant’s trademark registration is rejected under Section 2(a). In re McGinley also held that the Section 2(a) standard, “scandalous,” is not too vague as to bar the USPTO and the courts to apply the law fairly.

Despite the affirmation of the rejection of the registration, Judge Moore – the presiding judge – included a lengthy “additional views” section that outlined in detail why “it is time for this Court to revisit McGinley‘s holding on the constitutionality of § 2(a) of the Lanham Act,” and notes from the outset that the McGinley’s holding was “without citation to any legal authority.”

The judge also stated that trademarks are protected commercial speech, and that a rejection is an abridgement of that speech due to the highly beneficial rights a Lanham Act registration confers on a trademark owner.

The final conclusion was that Section 2(a) cannot pass constitutional scrutiny unless the Court is presented with a “substantial government interest that would justify the USPTO’s refusal to register disparaging marks,” which has yet to occur.

The parties have 45 days to file briefs on the constitutional issues, with a decision to follow.

Waheedan Jariwalla
US Attorney
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