By Dennis Crouch
In re Tam (Federal Circuit 2015) (en banc)
Big trademark case from the Federal Circuit. Judge Kimberly Moore filed the majority opinion holding that the statutory prohibition against registration of “disparaging marks” is an unconstitutional governmental regulation of speech. This issue has been coming to a head for many years, and this decision will likely impact the parallel Washington Redskins dispute. There would be a good chance for Supreme Court review of the case if the government presses its position. However, it is not clear to me that the government will do so.
The majority writes:
The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.
Nine members of the court signed the majority opinion filed by Judge Moore. In addition to signing the majority opinion Judge O’Malley filed a concurring opinion (joined by Judge Wallach). Judges Dyke, Lourie, and Reyna each field dissenting opinions.
Judge O’Malley’s concurrence argues that, in addition to serving as an unconstitutional speech limitation, section 2A is also “unconstitutionally vague, rendering it unconstitutional under the Fifth Amendment of the United States Constitution.”
Judge Dyk’s partial dissent argues that the statute itself is not “facially unconstitutional”, but has been applied in an unconstitutional manner in this particular case. Judge Dyk’s approach would leave intact the prohibition on registering marks that “disparage . . . or bring into contempt, or disrepute,” but would block the government from refusing registration based upon whether or not the government disagrees with a mark’s message.
Judge Lourie’s dissent first questions “why a statute that dates back nearly seventy years—one that has been continuously applied—is suddenly unconstitutional as violating the First Amendment. Is there no such thing as settled law, normally referred to as stare decisis?” On the merits, he argues that denial of a registration does not impact the freedom of speech. Rather, Mr. Tam can continue to use his “slants” mark even without registration. “The argument, therefore, that a trademark applicant’s right of free speech has been impaired by the failure of the USPTO to grant a federal registration is unconvincing.” Judge Lourie also questions whether a mark’s protection should count as even commercial speech.
Finally, Judge Reyna argues in dissent that “the refusal to register disparaging marks under § 2(a) of the Lanham Act is an appropriate regulation that directly advances the government’s substantial interest in the orderly flow of commerce.” As such, he argues, regulation satisfies the intermediate standard of scrutiny should be applied in the commercial speech category.