By David Kramer & James Stewart

In a landmark decision on December 22, 2015, the Federal Circuit ruled that the provision of the U.S. Trademark prohibiting “disparaging” trademark applications from registering is a violation of the First Amendment of the United States constitution. This provision of U.S. trademark law has gained relative notoriety in recent months, given that it was the basis for the Trademark Trial and Appeal Board’s decision to cancel six trademark registrations incorporating the REDSKINS mark, owned by the DC-based football team.  While today’s decision is not directly related to the ongoing REDSKINS trademark litigation, it likely carries significant implications for ultimate disposition of that case, as well as the fate of many other trademarks previously deemed to be “disparaging” by the United States Patent and Trademark Office (USPTO).

Today’s decision, which came in In re: Simon Shiao Tam, overturned the USPTO’s denial of a trademark application for the mark THE SLANTS filed by a band of the same name. A split court ruled that the provision prohibiting registration of “disparaging” trademarks is an unconstitutional ban on speech that, while unpopular or hurtful, must nevertheless be protected under the First Amendment. As a result of the decision, the USPTO can no longer refuse to register trademarks because of its disapproval of expressive “disparaging messages” conveyed by the marks.  This landmark decision is likely to have significant implications for trademark owners whose marks have previously been deemed unfit to register under this section of the Trademark Act.  In the coming days, we will provide further analysis on the practical implications of today’s ruling for brand owners and potential registrants.