by Paul Alan Levy
In a decision issued today, the Court of Appeals for the Federal Circuit sitting en banc overruled a 1981 ruling by the U.S. Court of Customs and Patent Appeals and held that the portion of section 2(a) of the Lanham Act that forbids the Trademark Office from registering disparaging trademarks is facially unconstitutional under the First Amendment. Although the appeal from the denial of registration had been brought by a dance rock band called “The Slants,” which had sought to register its name precisely for the purpose of ironic comment on its disparaging character, a clear majority of the court refused to limit its ruling to the parodic use of disparaging marks (as two members of the court proposed to do in a concurring opinion). As attractive as drawing this distinction might have been at one level, preserving the ability to dispute the disingenuous appeal by the owner of the Washington football team that its “Redskins” name is not really disparaging, it seems to me that the First Amendment basis for striking down the statute is well-taken.
The majority’s ruling treated the speech-limiting character of the statute as content-regulation subject to strict scrutiny, rejecting various arguments offered in support of lower levels of scrutiny, including that the statute regulates commercial speech, that registration is a form of government speech, and the registration represents a government subsidy. Particularly interesting is the en banc majority’s discussion of the commercial speech issue, recognizing that although trademarks represent a form of commercial speech insofar as they serve as identifiers for goods and services offered for sale, section 2(a) is not directed to the commercial aspect of the speech but rather to its purely expressive character which, therefore, is subject to strict scrutiny. This analysis is compatible with an argument that we often make on behalf of social critics who use trademarks as a focus for criticizing trademark holders and hence enjoy full First Amendment protection rather than being subject to traditional Lanham Act regulation of misleading uses of marks.