Washington Redskins Haven't Won Yet: Why The Constitutionality Of Section 2(A) Is Not Yet Final

What do Washington D.C.'s NFL team, the Redskins, and Mr. Tam's rock band, The Slants, have in common? Both have enjoyed unexpected victories recently and both have been called "disparaging" by the Patent and Trademark Office ("PTO"). However, while the Washington Redskins have been winning on the football field, many legal and business news websites have also been counting Mr. Tam's recent success at the Federal Circuit as a major win for the football team. In reality, that issue is far from settled.

The Federal Circuit first took up the issue of Mr. Tam's trademark last spring when it affirmed the PTO's rejection of his application to register the mark "THE SLANTS," the name of Mr. Tam's Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to weigh in on cultural and political discussions about race and society. Despite the ruling adverse to Mr. Tam, Judge Moore went on to write a lengthy argument addressing the need for a deeper constitutional review of the statutory prohibition against disparaging marks, as codified in Section 2(a) of the Lanham Act. In re Tam, 785 F.3d 567 (Fed. Cir. 2015). This opinion teed up the en banc review by the Federal Circuit, which issued a pivotal opinion on December 22, 2015 overruling prior precedent, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and held that the prohibition against registering disparaging marks at the PTO under Section 2(a) of the Lanham Act is an unconstitutional restriction on free speech. In re Simon Shiao Tam, No. 2014-1203, 2015 U.S. App. LEXIS 22300 (Fed. Cir. Dec. 22, 2015).

Based on the Federal Circuit's ruling, the media immediately decreed victory for the Washington Redskins' trademark battle, but there are reasons that the recent Federal Circuit ruling is not likely to be the last we hear of this issue:

First, the Federal Circuit is split. While 9 judges agree that the disparaging marks prohibition in Section 2(a) is entirely unconstitutional, the remaining 3 raise some valid concerns in partial or total disagreement. For example, writing for the Majority, Judge Moore places a great deal of importance on the chilling effect such regulation has on expressive speech. However, Judge Reyna and Judge Laurie argue in dissent that the Majority's analysis is flawed from the very beginning as trademark registration is commercial speech, as was held in precedential opinions, and thus not subject to heightened...