At United States Court of Appeals for the Federal Circuit, the Slants attained a big victory, based on the First Amendment, in its challenge of the U.S. Patent & Trademark Office’s (USPTO) refusal of a trademark registration. In attempting to register “The Slants” for a rock band, Simon Tam, an Asian-American, said he was attempting to “take ownership” of Asian stereotypes.
The Federal Circuit stated that the First Amendment “forbids government regulators to deny registration because they find the speech likely to offend others.” Under this holding, unless the U.S. Supreme Court decides to weigh in, it seems likely that the USPTO’s decision to cancel the registration of the “Washington Redskins” will also fail to survive constitutional scrutiny.
Federal Circuit Judge Kimberly Ann Moore held that “[i]t is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys… That principle governs even when the government’s message-discriminatory penalty is less than a prohibition.”
Moore continues by saying that words are powerful, and that “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.” Further, she adds:
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.
Several judges concurred, and others offered dissenting views.
Judge Alan Lourie wrote that “[t]he refusal of the USPTO to register a trademark is not a denial of an applicant’s right of free speech.” He also stated:
The markholder may still generally use the mark as it wishes; without federal registration, it simply lacks access to certain federal statutory enforcement mechanisms for excluding others from confusingly similar uses of the mark. Mr. Tam may use his trademark as he likes, whether it be encouraging discussion on or taking ownership of racial slurs, or identifying goods and services with his band. In fact, it seems quite likely that Mr. Tam will continue to use his band name to make a statement regardless of federal registration — the expressive purpose of his mark undoubtedly overshadows the commercial considerations.