The United States Court of Appeals for the Federal Circuit has declared that the U.S. Patent and Trademark Office may not deny trademarks on the grounds that they "disparage" discrete groups. In In re Tam[1], the Federal Circuit (which hears most appeals of patent and trademark disputes) held that the restriction on “disparaging” trademarks, found in Section 2(a) of the Lanham Act, constitutes an unconstitutional infringement on First Amendment free speech rights:

Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. 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. We therefore vacate the Trademark Trial and Appeal Board’s (“Board”) holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

This holding is likely to be dispositive in the pending Fourth Circuit litigation surrounding the trademark for the Washington Redskins,[2] on whose profanity-laden appellate brief we have previously remarked:

In support of the latter argument, the team provides extensive lists of wildly offensive trademarks that the PTO has issued.  Certainly many of the issued trademarks mentioned in the brief are so salacious, crass, sexist and/or racist that we hesitate, on this family-friendly blog, to list them here.  Indeed, this opening brief is notable in being one of the most [not inappropriately] profanity-laden court filings we have ever seen, and is worth a look for that reason alone. 

Yet as the TechDirt blog notes, the brief raises serious issues about free speech generally, and specifically the apparently capricious criteria by which the PTO determines what rises to the level of so offensive that it is un-issuable[.]

Hat tip: Tim Holly.