Our weekly SoCal IP Institute meeting on Monday, January 4, 2016, will be a discussion of the following case:
In re Simon Shiao Tam, Case No. 2014-1203 (Fed. Cir. December 22, 2015) (available here). Mr. Tam sought federal trademark registration of his band name THE SLANTS – a name described by the Federal Circuit as “statement about racial and cultural issues in this country.” Here, the Federal Circuit found that this rejection was improper because:
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, [the Federal Circuit] conclude[d] that the disparagement proscription of § 2(a) is unconstitutional.
Here, the Federal Circuit seemingly overturned the government’s ability to deny federal registration based upon “disparagement” of a particular mark for which registration is sought. The decision may have significant implications for other marks in similar circumstances.