Federal Circuit May Overturn Lanham Act's 'Morality Clause'

WASHINGTON, D.C.—Hey, want a Cock Sucker™? Sorry, you can't have one of those delicious rooster-shaped lollipops (pictured) because back in 2012, the U.S. Patent and Trademark Office (USPTO) refused to issue a trademark for the candy, ruling that one meaning of "Cock Sucker" was "immoral and scandalous," and under the Lanham Act, they didn't have to issue the mark—and their decision was upheld by a three-judge panel of the U.S. Court of Appeals for the Federal Circuit. But that may be about to change. The Lanham Act—or more properly, Title 15 Sec. 1052 of the United States Code—says that although the USPTO is required to register trademarks for an applicant's name or goods so that they may be distinguished from the name or goods of others, it doesn't have to do so if the item or name to be trademarked "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." But fast-forward three years, and who should be seeking a trademark other than Simon Shiao Tam, the front man for the Portland, Oregon-based Asian-American rock band The Slants—and sure enough, the Federal Circuit on April 16 once again denied the mark, citing the Lanham Act, in the case referred to as In Re: Tam. The case was heard by a panel of judges consisting of Kimberly Ann Moore, Alan D. Lourie and Kathleen M. O'Malley, and although it was Moore who delivered the opinion of the panel, she also saw fit to append to the decision 22 pages of material she described as "additional views," and it was that section which caused a majority of the judges on the Circuit to decide, without even being asked ("sua sponte"), to review the panel's decision en banc. "The parties are requested to file new briefs," the 11 judges of the Federal Circuit ordered. "The briefs should address the following issue: Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?" Judge Moore had questioned whether the Lanham Act's restrictions regarding "immoral speech" could stand the test of time, noting that at this point, the courts have recognized only three conditions that must exist for some particular example of speech to be a violation of the First Amendment: 1) The speech is not protected, as the courts have ruled that, for example, "obscene" speech does not qualify for protection; 2) The government must have a legitimate, constitutional reason for abridging the speech, such as prior government claims that flag-burning is not protected, which the courts have consistently struck down; and 3) it must fail the four-part test established in Central Hudson Gas & Elec. Corp. v. Public Service Commission for commercial speech. Judge Moore then proceeds to analyze the rejection of the "The Slants" trademark under the criteria she lays down, noting for instance that the musicians intend to use their name to “reclaim” and “take ownership” of Asian stereotypes—an intention that the Lanham Act would thwart. She further notes that having a trademark is beneficial in several respects, and that "The Supreme Court has repeatedly held that the government cannot deny access to a benefit because of the recipient’s exercise of constitutionally protected speech." Finally, she suggests that refusing to trademark "The Slants" because the term is supposedly scandalous, disparaging or brings some persons into disrepute is essentially viewpoint discrimination, another concept that the Supreme Court has held to be unconstitutional. It's unclear whether any adult entertainment company has run afoul of these Lanham Act restrictions, but if the Act is overturned or severely restricted in the current case, such freeing-up of previously barred language might easily give adult producers the ability to protect their works more effectively, and that's got to be a good thing. Thanks to J.D. Obenberger for tipping us to this case. Pictured: The Slants and the Cock Sucker.