The U.S. government can’t reject trademarks that some people might find disparaging or offensive

By 

BRENT KENDALL

Updated Dec. 22, 2015 5:52 p.m. ET

WASHINGTON—The U.S. government can’t reject trademarks that some people might find disparaging or offensive, a federal appeals court ruled Tuesday, citing constitutional free-speech protections.

The U.S. Court of Appeals for the Federal Circuit in Washington struck down a nearly 70-year-old provision in federal law and sided with Simon Tam, the frontman for the Asian-American rock band the Slants. Mr. Tam had sought to register the band’s name, but a U.S. Patent and Trademark Office examiner denied the registration, saying the phrase was likely disparaging to people of Asian descent.

The ruling could help the Washington Redskins football team, which is fighting a 2014 Patent and Trademark Office decision to cancel its trademarks because Native Americans found the name disparaging. The team’s case is in a different court, but the Redskins are making the same legal argument as Mr. Tam.

Tuesday’s decision endorsed a robust view of the First Amendment as it struck down a part of the 1946 Lanham Act that barred the registration of disparaging trademarks. The appeals court also acknowledged its ruling opened the door for the registration of trademarks that contain ethnic slurs and “offend vulnerable communities.”

“Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others,” Judge Kimberly Moore wrote for the court’s majority. She said the Constitution protects free speech “even when speech inflicts great pain.”

One dissenting judge, Alan Lourie, said the court wrongly interfered with long-standing congressional policy of giving the Patent and Trademark Office authority to “filter out certain undesirable marks” from the federal trademark registration system. The court’s decision to overturn past legal precedent and invalidate the provision would “further the degradation of civil discourse,” the judge said.

Civil liberties groups—and the Redskins—had filed legal briefs supporting Mr. Tam. The musician said his band was fighting racial stereotypes, not disparaging people.

Some Asian legal groups opposed Mr. Tam’s case, arguing that expressions of racism take on a different character when enshrined with a government-blessed trademark.

Registered U.S. trademarks provide several legal rights and benefits, including the ability to use the trademark exclusively nationwide when it hasn’t been used previously by others. Trademark holders also can receive assistance from U.S. Customs and Border Protection in stopping the importation of infringing or counterfeit goods.

A trademark can be claimed even if it isn’t federally registered. In the case of the Redskins, the team could assert limited common-law rights to the name even if it loses its court battle.

A spokesman for the Redskins, whose case is on appeal at the Fourth U.S. Circuit Court of Appeals in Richmond, Va., declined to comment on the ruling.

Few trademarks were rejected as disparaging in the early days of the Lanham Act, but the issue has gained prominence. In addition to the Redskins’ name, the Federal Circuit decision listed many other trademark requests the patent office has rejected in recent years, including “Stop The Islamisation of America,” “Mormon Whiskey,” and others.

The ruling could have broad impact because the Federal Circuit is the court that hears most appeals involving the Patent and Trademark Office.

The government has the option to appeal the case to the Supreme Court. A spokesman for the Patent and Trademark Office declined to comment, citing the continuing litigation.

Ronald Coleman, a lawyer for Mr. Tam, said the court appropriately recognized the constitutional problems with allowing trademark examiners to deny registration based on a trademark’s message.

“You’re asking people who are trained as lawyers to make decisions that are in the realm of sociology and history,” Mr. Coleman said. “They’re not equipped to do this. It’s offensive for them to do this.”

Write to Brent Kendall at brent.kendall@wsj.com