THE SLANTS, THE REDSKINS, STOP THE ISLAMISATION OF AMERICA, AMISHHOMO, THE CHRISTIAN PROSTITUTE, AMISHHOMO, MORMON WHISKEY, KHORAN for wine, HAVE YOU HEARD THAT SATAN IS A REPUBLICAN?, RIDE HARD RETARD, ABORT THE REPUBLICANS, HEEB, SEX ROD, MARRIAGE IS FOR FAGS, DEMOCRATS SHOULDN’T BREED, REPUBLICANS SHOULDN’T BREED, 2 DYKE MINIMUM, WET BAC/WET B.A.C., URBAN INJUN , SQUAW VALLEY, DON’T BE A WET BACK, FAGDOG, N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS
Offensive? Racist? Most certainly. Protectable? You bet.
Regardless of your politics or sensibilities, all of these words were previously denied federal trademark protection because they were all “disparaging” marks, under the Lanham Act 15 U.S.C. § 1052(a). However, in a fairly bold move, the Federal Circuit in its opinion, issued December 22, 2015 held that this aspect of Section 2(a) of the Lanham Act is unconstitutional under both “strict” and “intermediate scrutiny” standards.
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…
In Re Tam, p. 4. The CAFC took the time to track the purpose and the history of the Lanham Act, which was essentially passed to further the two goals of (1) consumer protection and (2) protecting business investment from ” misappropriate by pirates and cheats.” With this backdrop, the CAFC held that Section 2(a)’s restrictions preventing deceptive marks is permissible, but that its prohibitions on “expressive aspects” of marks, or whether the marks are “immoral or scandalous” merely amounted to nothing more than a judgment call by a single trademark examiner:
A single examiner, 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.
Id. at p. 10. It would seem that this same analysis would apply to other aspects of Section 2(a). In other words, it would seem that the Court would have used the same logic to invalidate the ban on “immoral” or “scandalous” marks, or marks that would otherwise promote violations of federal law. But the Court unfortunately limited its decision:
“We limit our holding in this case to the constitutionality of the § 2(a) disparagement provision. Recognizing,
however, that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks, we leave to future panels the consideration of the § 2 provisions other than the disparagement provision at issue here.”
Id. at p. 8 (emphasis added). As a result, if you’re one of the many people attempting to obtain registrations on “immoral” or “scandalous” goods and services, you will still have to side-step this issue until the CAFC receives a direct challenge to it. Thus, if you’re attempting to obtain federal registration on, say, marijuana-related goods and services (which are still listed as a Schedule I drug under the Controlled Substances Act), you will still face these objections from the Trademark Office.
Could this be a sign from the CAFC that it will deplete the Trademark Office’s ammunition within Section 2(a)? It seems like we just need the right case to find out.