As a kind of Christmas present to liberty and the U.S. Constitution, the Federal Circuit Court of Appeals, sitting en banc (the entire court), today reversed more than 30-years of jurisprudence by holding that trademark registration under the Lanham Act deserves First Amendment protection. The import of this holding is that trademarks may no longer be rejected by the United States Patent and Trademark Office (“USPTO”) just because the USPTO believes the mark to be disparaging.

In the case In re Tam, the federal court, which specializes in patent and trademark cases, found that the USPTO’s rejection of the musical group name “The Slants” because it disparaged Asians was unconstitutional because there was no “compelling state interest” to censure the viewpoint of the trademark owner. As a result, Simon Tam will now be able to register his band name as a federal trademark, thus allowing him to protect the name and products and services sold using that name against encroachers and counterfeiters.

What made this decision possible was the recent litigation waged by the American Freedom Law Center (“AFLC”) on behalf of Pamela Geller and Robert Spencer to register their trademark, “Stop the Islamisation of America” (“SIOA”). Like the Slants trademark, the USPTO rejected the SIOA trademark on the ground that it disparaged Muslims and even Islamists by suggesting they should be “stopped.” AFLC argued the case before a three-judge panel of the Federal Circuit Court, which upheld the USPTO ruling of disparagement.

However, on the heels of the SIOA decision, by the time the Slants case found its way to the important Federal Circuit Court, the appellate judges were apparently ready to reverse their prior rulings which rejected any First Amendment arguments. Indeed, the court’s opinion starts off referencing the USPTO’s rejection of the SIOA trademark as a rejection aimed improperly at censuring important expressive speech. The court went on to reference SIOA, and the underlying case of In re Geller, no less than seven times.

David Yerushalmi, AFLC co-founder and Senior Counsel, noted:

“This demonstrates an important adage about good lawfare and good lawyering. Even when you lose initially you may still ultimately prevail because good, hard-fought lawfare has a way of exposing bad law and bad judgments. This is one of those rare instances where a federal court has emphatically and quite properly reversed itself. You can be certain that our clients will now proudly seek federal trademark registration.”

Robert Muise, AFLC co-founder and Senior Counsel, added:

“At the end of the day, this was a complete victory for the First Amendment and an absolute defeat for political correctness. Our SIOA trademark case paved the way for this important decision, reaffirming that hard work, determination, and some good lawyering can create a favorable sea change in the law.”

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