Earlier this week we covered Part I of this battle, trademark law. Now, let’s get to the second half: Constitutional law.

Constitutional Law Considerations

Where do constitutional law considerations fit in with this debate? The question comes down to whether the USPTO and TTAB are violating free speech by refusing to register “disparaging” trademarks. The Federal Circuit previously answered this question by stating that a failure to register a federal trademark does not prohibit an individual from using a particular term as a source identifier for their goods and services. As a result, it cannot be a violation of free speech. This precedent was set down in the case of In re McGinley, where the USPTO specifically stated:

“With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.” 660 F.2d 481, 484 (C.C.P.A. 1981).  

The In re McGinley case precedent has stopped subsequent courts from revisiting the possibility that a refusal to register a mark because it is disparaging is an actual violation of the First Amendment’s free speech provisions.

In the case of “The Slants,” one Federal Circuit Judge wrote a separate opinion on the matter, stating in relevant part that it is time to revisit the precedent set down in the McGinley case. Specifically, she noted that the protection now afforded to commercial speech require the Court to revisit the notion that a trademark owner can still use the mark without having a federal registration. Not having a federal registration for a mark presents serious constraints on the ability to use and commercialize the name.  

The constitutional underpinnings and issues underlying this determination are outside of the scope of the particular post. But Judge Moore’s-one of the judges deciding this matter- opinion is surely the catalyst for the Federal Circuit’s decision to void its opinion in the “Slants” case in order to fully weigh the constitutionality of the Lanham Act’s rule against disparaging trademarks. The Lanham Act is the federal statute governing trademarks. The Federal Circuit’s decision to rehear the case en banc, sua sponte-where the court decides to rehear an issue without any request from the parties-will allow the full court to determine the constitutionality of Section 2(a) of the Lanham Act, and potentially overrule its own precedent on the issue.

This is an unusual decision, to say the least, and surely motivated by Judge Moore’s opinion.

Potential Consequences of the Decision

If the Federal Circuit decides to overturn its prior precedent, what affect will it have on the “Slants” and the Washington Redskins’ cases? While the outcome of the en banc rehearing will certainly be binding on the “Slants” case, it will not be binding on the Washington Redskins’ case, which is currently fighting its battle in the Fourth Circuit. However, the government in both cases relied heavily on the McGinley precedent in order support the government’s position that refusal to register a trademark is not a free speech violation.

Which Law Wins?

This question has not yet been answered. If the Court determines Section 2(a) of the Lanham Act is unconstitutional in the context of free speech, we may see a plethora of new types of trademark applications for marks that may have not been previously eligible for federal protection. However, this is most likely the start of a long legal battle, as most things are when there are constitutional implications to any legal decision. Stay tuned for more.