Prohibiting Disparaging Trademarks Violates Constitutional Rights

In the U.S. Court of Appeals for the Federal Circuit, it has recently been held that the Lanham Act's prohibition against federal registration of "disparaging" trademarks violates the constitutional right to free speech protected by the First Amendment.

The decision was issued via the case In re Tam on 22 December 2015, and was a split decision. 

This case revolves around an application filed by Simon Shiao Tam, the leader of a rock band called The Slants, to federally register the band's name as a trademark. The USPTO refused registration claiming that the mark "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.", pursuant to Section 2(a) of the Lanham Act.

The Federal Circuit and its predecessor courts have long upheld the constitutionality of the disparagement provision on the rationale that refusal to register a trademark does not affect an applicant's right to use his or her mark.

The In re Tam majority rejected this reasoning, characterizing the Section 2(a) bar on registration of disparaging marks as content-based and viewpoint-based discrimination that deprives individuals of numerous substantive and procedural rights.

Judge Kathleen O'Malley also stated that the disparagement provision of Section 2(a) was unconstitutionally vague, and therefore a violation of the Fifth Amendment's Due Process Clause.