Photo courtesy of The Slants.

Federal trademark law denies certain protections to trademarks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Does that exclusion violate the First Amendment? The Federal Circuit just agreed to rehear that question en banc, in the case involving the Asian-American band “The Slants” (which I discussed here). And the decision in the case may well affect the Redskins controversy, which is now pending.

Federal trademark law gives various benefits to owners of registered trademarks, but denies registration to marks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Past decisions have upheld denial of registration on these grounds, for marks such as the “Redskins” (now on appeal to the Federal Circuit), “Stop the Islamization of America,” “Khoran” as a mark for wine, “Heeb,” “Porno Jesus,” and “Squaw Valley” (the last of these as to some goods but not others).

Last week, a panel decision followed Federal Circuit precedent on this, and concluded that “The Slants” would indeed perceived as disparaging by a substantial fraction of Asians. (The band apparently uses the name “to wrest ‘ownership’ of the term from those who might use it with the intent to disparage,” in the words of the decision below, but the focus of the trademark law test is on reasonable public perception, not on the claimant’s intentions.) But Judge Kimberly Moore also wrote a separate opinion, in which she argued in favor of overturning the Federal Circuit precedent on which the panel relied. The panel can’t overrule the precedent, but the entire Federal Circuit sitting en banc can — and the Federal Circuit has indeed agreed to consider whether to do this.

I think the “disparaging marks” exclusion is unconstitutional. To be sure, it doesn’t stop people from using such marks; it is therefore not a prohibition on speech. But federal trademark law does provide a valuable benefit to owners of registered marks (basically, important protections against others’ unauthorized commercial use of those marks that may confuse consumers). And the “disparaging marks” exclusion denies that important benefit to particular kinds of speech.

Like other such benefit programs (such as broadly available funding programs, tax exemptions, or access to government property), the trademark registration system should be seen as a form of “limited public forum,” in which the government may impose content-based limits but not viewpoint-based ones. And excluding of marks that disparage groups while allowing marks that praise those groups strikes me as viewpoint discrimination. For a similar argument, see the ACLU brief in the Redskins appeal. It will be interesting to see what the Federal Circuit sitting en banc does.

Thanks to Prof. Greg Dolin for the pointer.