Portion of Lanham Act Section 2(a) Declared Unconstitutional

by Steve Reiss - now at stevenreiss@sbp-us.com

Congress enacted the Lanham Act in 1946 to provide a national system for registering and protecting trade-marks used in interstate and foreign commerce.

The Lanham Act, over 70 years old, has rarely been in the public’s eye. The Court of Appeals for Federal Circuit, In re Tam (en banc), an appeal from the Trademark Trial and Appeal Board noted that:

Only in the last several decades has the disparagement provision [15 USC 1052(a)] become a more frequent ground of rejection or cancellation of trademarks.

And now, the Federal Circuit has spoken. In In re Tam, the en banc court has made it clear:

 The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of §2(a) is unconstitutional.

As to the long history of the Lanham Act and its ‘sudden’ unconstitutionality, Judge Lourie says in dissent:

First, one wonders why a statute that dates back nearly seventy years—one that has been continuously applied—is suddenly unconstitutional as violating the First Amendment. Is there no such thing as settled law,normally referred to as stare decisis. Since the inception of the federal trademark registration program in 1905, the federal government has declined to issue registrations of disparaging marks.