Government Can't Deny Trademarks Over Offensive Names, Appeals Court Rules

An Asian-American rock-band with an eyebrow-raising name has scored a big victory in the Court of Appeals for the Federal Circuit.

The court ruled that their name — The Slants — is private speech and therefore protected by the First Amendment. The government, the court writes, has no business trying to regulate it.

At issue in the case was Section 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office (PTO) to deny or cancel a trademark if it is "disparaging" of persons, institutions or national symbols.

In a 10-2 decision, the court decided parts of that section were unconstitutional. Conferring a trademark, the court argues, does not make the band's name government speech.

Here's the comparison the majority uses: "The PTO's processing of trademark registrations no more transforms private speech into government speech than when the government issues permits for street parades, copyright registration certificates, or, for that matter, grants medical, hunting, fishing, or drivers licenses, or records property titles, birth certificates, or articles of incorporation."

The founder of the band, Simon Tam, has been fighting this battle for years. As our friend Kat Chow reported for Code Switch earlier this year, Tam understands that the name is offensive, but he views this as an opportunity to reclaim that slight.

On Twitter, Tam said that the decision was "the best present ever."

In its conclusion, the court says it realizes that its decision could mean more registrations of offensive marks.

"But much the same can be (and has been) said of many decisions upholding First Amendment protection of speech that is hurtful or worse," the majority wrote. "Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech 'inflict[s] great pain,' our Constitution protects it 'to ensure that we do not stifle public debate.'"

A similar case concerning the trademark of the Washington Redskins name is under review by the 4th Circuit Court of Appeals.

Rebecca Tushnet, a professor at Georgetown Law, said that this decision is headed to the Supreme Court one way or another.

"This is the first real, serious constitutional treatment of the issue," Tushnet said. And since the Lanham Act was passed in 1946, First Amendment law has changed quite a bit.

For example, at the time when the Lanham Act was passed, there was no constitutional protection for commercial speech.

The 4th Circuit, Tushnet says, will read this decision carefully but it's impossible to predict how they will rule.

In a statement, Lee Rowland, an attorney with the American Civil Liberties Union, who argued before the court in October, praised the decision.

"Our First Amendment prevents the government from giving rights and benefits only to people engaged in the 'right kind"' of speech, and that principle holds just as true in the trademark system," she said in a statement. "It should be up to the public, not the government, to drive bad ideas from the marketplace."