The Commissioner of Trademarks has changed the way the PTO handles trademark applications involving potentially offensive, vulgar or disparaging marks in light of the Court of Appeals for the Federal Circuit’s sweeping decision in In re Tam.
The CAFC’s December 22, 2015 sua sponte, en banc supplemental decision in Tam threw a proverbial freedom of speech grenade onto Section 2(a) of the Lanham Act (15 U.S.C. § 1052), which bars registration of marks containing immoral, deceptive, scandalous, or disparaging matter. The CAFC, in a 9-to-3 decision, held that the disparagement provision of Section 2(a) was unconstitutional as violating the First Amendment, finding that the government had presented no legitimate interest for burdening speech it finds offensive under either the strict scrutiny review (appropriate for government regulation of message or viewpoint) or the intermediate scrutiny standard traditionally applied to regulation of the commercial aspects of speech.
In anticipation of Supreme Court review of Tam, the Commissioner has issued an informal directive to trademark examiners that any application for a mark that is potentially violative of Section 2(a) should be “suspended” rather than refused on that basis until the Supreme Court takes up Tam and its companion cases. In addition, although the Tam decision was expressly limited to the “disparagement” provision in Section 2(a), the Commissioner’s directive apparently applies to all Section 2(a) bases for refusal (immoral, deceptive, scandalous, or disparaging). All non-Section 2(a) application issues will still be addressed prior to suspension.
Prior to Tam, applicants seeking to register potentially vulgar or disparaging matter received a Section 2(a) refusal “if the examiner ‘make[s] a prima facie showing that a substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark, as used on or in connection with the relevant goods or services, to be disparaging in the context of contemporary attitudes,’ the burden then shifts to the applicant for rebuttal.” (CAFC Opinion, p. 10, citing Trademark Manual of Exam Proc. (“TMEP”) Section 1203.03(b)(i) (Jan. 2015 Ed.); also citing In re Geller, 751 F.3d 1355 (Fed. Cir. 2014). Thus, as pointed out by the Tam decision “a single examiner, who with no input from her supervisor, can reject a mark as disparaging by determining that it would be disparaging to a substantial composite of the referenced group.” (CAFC Opinion, p. 10)
In Tam, the applicant is the leader of the Asian-American band “The Slants,” so named to “re-claim” the term from its historical use as a derogatory reference to Asians. The CAFC agreed with the trademark examiner and the TTAB that the mark was disparaging, however, it determined that refusing a registration under Section 2(a) amounted to discrimination based on the message conveyed by the speech and thus presumptively invalid. The government presented no argument as to why the statute could survive strict scrutiny.
Instead, the government’s main argument in Tam was that Section 2(a) does not implicate the First Amendment because it does not prohibit any “speech”- the same line of reasoning followed in In re McGinley, 660 F.2d 481(C.C.P.A. 1981) (finding that an applicant’s First Amendment rights are not restricted by a refusal to register because the refusal does not affect his rights to use the unregistered mark.)
In Tam, the CAFC disagreed (reversing McGinley), finding that denying an applicant the significant benefits of federal registration amounted to a restriction of free speech because it impacts the applicant’s choice of expression (the mark), stating: “Federal trademark registration brings with it valuable substantive and procedural rights unavailable in the absence of registration. These benefits are denied to anyone whose trademark expresses a message that the government finds disparages any group, Mr. Tam included. The loss of these rights, standing alone, is enough for us to conclude that § 2(a) has a chilling effect on speech. Denial of federal trademark registration on the basis of the government’s disapproval of the message conveyed by certain trademarks violates the guarantees of the First Amendment.” (CAFC Opinion, p. 38)
Although it remains unclear whether the Supreme Court will even take up Tam, given the need for uniform application of Section 2(a) by the PTO and reviewing courts, Supreme Court review is both highly likely and much needed. Section 2(a) also provides the basis for cancelling existing registrations, even decades-old registrations such as Pro Football, Inc.’s “Redskins” trademarks. Cancellation of the Redskins mark is currently before the United States Court of Appeals for the Fourth Circuit. Because the CAFC and the Fourth Circuit are sister courts, the CAFC’s decision in Tam is not binding on the Fourth Circuit’s determination of the Redskins case.
The constitutionality of Section 2(a) is also a key issue in the Redskins case. In addition to freedom of speech issues, Pro-Football, Inc. also challenges the constitutionality of Section 2(a) on due process grounds. In its opening brief to the Fourth Circuit (filed prior to the December 2015 In re Tam decision) Pro-Football argued “Section 2(a)’s focus on the mark’s message at the time of registration compounds the vagueness and independently violates due process: the Redskins were forced to defend their marks today against charges that the marks disparaged Native Americans a half-century ago, in 1967. Historical records no longer exist, and key witnesses are long dead.” (Opening Brief at p. 12). It should be noted that in cancellations proceedings involving allegedly disparaging marks, the issue is whether that term was disparaging at the time the registration was issued– and not whether the term has become disparaging since the time of registration. Consorzio del Proscuitto di Parma v. Parma Sausage Prods., Inc., 23 USPQ2d 1894, 1898-99 (TTAB 1992).
With mark applications in flux and established registrations under attack, the Supreme Court’s determination as to whether Section 2(a) is constitutional is sorely needed.