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The Trademark Registration Process and the First Amendment

Theodore H. Davis Jr.

©2016. Published in Landslide, Vol. 8, No. 5, May/June 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In United States v. Steffens (Trademark Cases),1 the United States Supreme Court invalidated as unconstitutional the first two pieces of federal trademark legislation, which Congress had enacted under the auspices of the Constitution’s patent and copyright clause;2 according to the Court, the commerce clause3 was the appropriate basis for the federal protection of trademarks and service marks.4 Congress eventually accepted the Court’s suggestion by enacting new legislation under the commerce clause, culminating in the 1946 passage of the Lanham Act. During the 136 years since the Trademark Cases, and although courts at times have declined to enforce commerce clause–based trademark legislation in particular situations presenting perceived First Amendment concerns,5 no subsequent judicial opinion held a particular section of the Lanham Act unconstitutional.

That situation changed on December 22, 2015, when the United States Court of Appeals for the Federal Circuit, sitting en banc,6 invalidated a prohibition set forth in section 2(a) of the Lanham Act prohibiting the federal registration in the U.S. Patent and Trademark Office (USPTO) of “matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”7 The occasion of that holding was the USPTO’s rejection under section 2(a) of an application to register a mark comprising THE SLANTS for “entertainment in the nature of live performances by a musical band.”8 The Federal Circuit declined to disturb the USPTO’s determination that the applied-for mark was potentially disparaging of individuals of Asian descent, in part because the band’s Wikipedia page acknowledged the mark was “derived from an ethnic slur for Asians.”9 Nevertheless, the court ultimately held in the applicant’s favor because the language of section 2(a) at issue was a content-based restriction on speech subject to review under a strict scrutiny standard, a review it could not survive.10 Significantly, one basis of the court’s holding was its conclusion that marks found potentially disparaging under section 2(a) are thereby ineligible for protection against infringement under section 43(a) of the Lanham Act11 and the common law.12

In contrast, the opposite outcome held in Pro-Football, Inc. v. Blackhorse,13 an opinion addressing the registrability of six service marks owned by the parent company of Washington D.C.’s National Football League franchise (PFI), each of which consisted in whole or in part of the word “redskins.” Approximately six months before the Federal Circuit’s opinion in Tam, the United States District Court for the Eastern District of Virginia affirmed the USPTO’s finding that PFI’s marks potentially disparaged Native Americans. In the process, the court rejected PFI’s argument that section 2(a)’s prohibitions on the registration of potentially disparaging marks violated the First Amendment, in part because of the court’s holding that the decision to register or not to register a particular mark constitutes government speech not subject to the restrictions of the amendment’s free speech clause.14 PFI has appealed that decision to the Fourth Circuit.

The ultimate resolution of the statute’s constitutionality will almost certainly turn on the answers to a number of questions. These include the following:

Does a determination of unregistrability constitute government speech not subject to First Amendment scrutiny? In Walker v. Texas Division, Sons of Confederate Veterans, Inc.,15 the Supreme Court held that states can constitutionally refuse to issue specialty license plates to particular groups because such a refusal is nothing more than the exercise of the states’ own free speech rights. The Pro-Football court held that the USPTO’s registrability determinations fall into the same category,16 but the Federal Circuit was not similarly receptive to that theory.17

What is the significance of the ability of a mark owner denied registration to continue to use its mark? Affirmative prohibitions on the use of potentially disparaging marks violate the First Amendment.18 Nevertheless, the USPTO’s refusal to register a particular mark has no effect on the mark owner’s ability to use it.19

Does a refusal to register constitute an unconditional condition? Even if such a refusal does not affirmatively prohibit the refused mark’s use, the government “may not deny a benefit to a person on a basis that infringes his constitutionally protected interests—especially, his interest in freedom of speech.”20

Should the USPTO’s user-fee-funded system play a role in the analysis? Holdings that section 2(a)’s content-based prohibitions are constitutional have their origin in the proposition that those prohibitions represent “a judgment by the Congress that such marks not occupy the time, services, and use of funds of the federal government.”21 The USPTO’s operations, however, have largely been funded by user fees for nearly a quarter century.22

Whether courts hearing disputes over section 2(a)’s content-based prohibitions on registration—including, possibly, the Supreme Court—will ultimately reach a consensus on these complex inquiries remains to be seen.


1. 100 U.S. 82 (1879).

2. U.S. Const. art. I, § 8, cl. 8.

3. U.S. Const. art. I, § 8, cl. 3.

4. Trademark Cases, 100 U.S. at 98–99.

5. See, e.g., E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (holding content of video game entitled to First Amendment protection in suit brought by service mark owner).

6. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015).

7. 15 U.S.C. § 1052(a).

8. U.S. Trademark Application Serial No. 85,472,044 (filed Nov. 14, 2011).

9. Tam, 808 F.3d at 1332.

10. Id. at 1334.

11. 15 U.S.C. § 1125(a).

12. See Tam, 808 F.3d at 1344 & n.11.

13. 112 F. Supp. 3d 439 (E.D. Va. 2015).

14. Id. at 464.

15. 135 S. Ct. 2239 (2015).

16. Pro-Football, 112 F. Supp. 3d at 464.

17. Tam, 808 F.3d at 1346.

18. See, e.g., Bad Frog Brewery, Inc. v. N.Y. State Liquor Auth., 134 F.3d 87, 96 (2d Cir. 1998); Sambo’s Rests., Inc. v. City of Ann Arbor, 663 F.2d 686, 694 (6th Cir. 1981); Hornell Brewing Co. v. Brady, 819 F. Supp. 1227, 1233 (E.D.N.Y. 1993).

19. See In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012) (“Because a refusal to register a mark has no bearing on the applicant’s ability to use the mark, we have held that § [2(a)] does not implicate the First Amendment rights of trademark applicants.”).

20. Perry v. Sindermann, 408 U.S. 593, 597 (1972); see also 44 Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 513 (1996) (“Even though government is under no obligation to provide a person, or the public, a particular benefit, it does not follow that conferral of the benefit may be conditioned on the surrender of a constitutional right.”).

21. In re McGinley, 660 F.2d 481, 486 (C.C.P.A. 1981).

22. See Revision of Patent and Trademark Fees, 56 Fed. Reg. 65,142, 65,147 (Dec. 13, 1991).

Theodore H. Davis Jr.

Theodore H. Davis Jr. is chair of the ABA Section of Intellectual Property Law. He is a partner at Kilpatrick Townsend & Stockton LLP in Atlanta, Georgia, where he divides his practice between client counseling and litigation in the fields of trademark, copyright, false advertising, and unfair competition law. He is also an adjunct professor at Emory University School of Law.