Offensive Trademarks Get Circuit’s Approval

      (CN) – Overturning the government’s refusal to protect the trademark of the outrageously named Asian-American dance-rock group The Slants, the en banc Federal Circuit called the bar against disparagement unconstitutional Tuesday.
     Front man and bassist Simon Shiao Tam spent five years fighting the U.S. Trademark Office to recognize a name that he calls an attempt to “own” a stereotype against his community.
     The office denied his applications twice, citing the Lanham Act’s prohibition on disparaging “persons, living or dead, institutions, beliefs, or national symbols.”
     Although the Federal Circuit initially upheld that rejection in April, proceedings became heated as 12-judge court reheard the case en banc in October.
     Judge Kimberly Moore had remarked at the hearing that the government’s reasoning could let it to deny a doctor protection of his medical practice if he shared a name with Osama bin Laden.
     Others on the court shared Moore’s skepticism and joined the 62-page opinion she penned for the nine-member majority Tuesday.
     “It 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,” Moore wrote.
     The decision inspired a stinging dissent from Judge Jimmie Reyna, who likened a racially offensive trademark to a business policy of discriminating against minorities.
     “Whether a restaurant named ‘SPICS NOT WELCOME’ would actually serve a Hispanic patron is hardly the point,” said Reyna, the former president of the Hispanic National Bar Association. “The mere use of the demeaning mark in commerce communicates a discriminatory intent as harmful as the fruit produced by the discriminatory conduct.”
     The majority ruling notes that “courts have been slow to appreciate the expressive power of trademarks.”
     “Words – even a single word – can be powerful,” Moore wrote. “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.”
     Tam’s attorney, Ronald Coleman with the New Jersey-based firm of Archer & Greier, noted in an interview that one word could sum his client’s reaction to the ruling.
     “Whoosh!” he said.
     Finding the disparagement bar unconstitutional will have wide ripples in the realm of trademark battles, the attorney added.
     “It’s not going to be the government that passes on winners or loses in the forum of public debate,” Coleman said.
     Judge Alan David Lourie meanwhile wrote in dissent that the majority’s holding broke decades of jurisprudence.
     “First, one wonders why a statute that dates back nearly seventy years – one that has been continuously applied – is suddenly unconstitutional as violating the First Amendment,” Lourie wrote. “Is there no such thing as settled law, normally referred to as stare decisis?”
     Judges Reyna and Lourie both joined a partial dissent by Judge Timothy Dyk.
     Though Dyk said Tam’s trademark did deserve copyright protection, the judge criticized what he called the majority’s “sweeping” conclusion that a subclause of the Lanham Act was unconstitutional.
     The American Civil Liberties Union’s attorney Lee Rowland, who also argued before the circuit as a friend-of-the court, celebrated the ruling as a free-speech victory.
     “Our First Amendment prevents the government from giving rights and benefits only to people engaged in the ‘right kind’ of speech, and that principle holds just as true in the trademark system,” Rowland said. “It should be up to the public, not the government, to drive bad ideas from the marketplace.”
     It is unclear how today’s ruling might affect ongoing court battles surrounding the trademark for the Washington Redskins, as the team appeals a federal judge’s ruling in July canceling its trademark.
     That appeal will move up to a different federal appeals court: the Richmond, Va.-based Fourth Circuit.
     Tam’s lawyer Coleman, however, predicted that Fourth Circuit will find today’s ruling persuasive.
     “The Federal Circuit is very influential,” he noted.
     The Department of Justice declined to comment.

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