The Federal Circuit Rules § 2(a) Of The Lanham Trademark Act Is Unconstitutional

Coming as no surprise to anyone who attended or read the transcript of the en banc oral argument hearing in the case of In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015), the Federal Circuit Court of Appeals has ruled § 2(a) of the Lanham Trademark Act of 1946 violates the First Amendment on its face. The nine-judge majority limited its holding to § 2(a)'s prohibition on the registration of marks which "may disparage... persons, living or dead, institutions, beliefs or national symbols." In doing so, the Court expressly overruled its longstanding precedent to the contrary, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). Two judges would uphold the constitutionality of § 2(a) in its entirety, and another would hold that § 2(a) is facially constitutional, but as applied to Mr. Tam in this particular case, violated his First Amendment rights.

To determine whether a mark is unregistrable under § 2(a)'s disparagement provision, the U.S. Patent and Trademark Office (PTO) applies a two part test: (1) what is the likely meaning of the trademark in the context of its use; and (2) if found to refer to identifiable persons, institutions, etc., whether that meaning may be disparaging to a substantial composite of the referenced group. The majority opinion, written by Judge Moore, found this to be classic viewpoint discrimination by the government. The government argued that § 2(a) is content neutral because it is directed at words or symbols, and not the viewpoint or message of the mark's holder in using that designation. But the Court rejected this, pointing to numerous examples of identical terms accepted for registration, and rejected under § 2(a), depending on whether the message the referenced group takes from it is positive (registrable) or negative (not registrable). "Importantly, every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a message that is disparaging to certain groups." In re Tam, *24.

The holding that § 2(a) is viewpoint discrimination dictates the statute be subject to strict scrutiny under a long line of Supreme Court cases, the Federal Circuit held. Judge Moore noted that that the government did not even attempt to salvage the disparagement provision under strict scrutiny analysis.

The Court likewise rejected each of the government's other arguments. First, in response to the government's claim that § 2(a) does not prohibit any speech, leaving the trademark...