Appellate Court Strikes Down as Unconstitutional Part of Trademark Law, Clears Way to Re-register "Redskins"


On December 22, 2015, the US Court of Appeals for the Federal Circuit struck down as unconstitutional Section 2(a) of the Lanham Act which bars registration of offensive marks. In In Re Tam, the Court took up the issue of the denial of registration of the band name The Slants. The United States Patent and Trademark Office had repeatedly denied registration for the band's name because of offensive racial connotations.   The Slants' trademark appeal opens the door to Redskins' re-registrationIn fact, Simon Tam, an Asian-American, and his band had intentionally chosen the name in order to "take back" the racial term and turn stereotypes that the public may have of Asian Americans. Much of the band's branding imagery and advertising material contained Asian stereotypes in order to capitalize on this theme. After being denied his registration twice, Tam took his appeal to the Federal Circuit Court of Appeals.

In a majority decision, The Federal Circuit handily struck down Section 2(a) of the Lanham Act. While the majority opinion stated that it was a unconstitutional restriction of free speech because it was a content-based restriction, several judges also viewed the language of the act to be unconstitutionally vague, and therefore unenforceable. Bottom line: the USPTO can't deny your trademark registration just because it's offensive. 

 The Slants' trademark appeal opens the door to Redskins' re-registrationThe most interesting effect of this decision, at least in a national context, will be the effect on the Washington Redskins' trademark registration controversy. The Washington Redskins had their trademark rescinded by the United States PTO because the term was deemed offensive by the agency. Specifically, the agency relied on Section 2(a) of the Lanham Act. Now that the Federal Circuit Court of Appeals has determined that this section is unconstitutional, there is essentially no further argument for denying the Washington Redskins the legal registration of their trademark.

While I doubt that this will be an issue that is taken to the Supreme Court by The Slants, there is still the possibility that it may wind up there. Regardless, I would not be surprised if the Washington Redskins were granted their trademark registration in the very near future.