Longtime Atlas readers are quite familiar with our First Amendment trademark case. We have been fighting to trademark SIOA (Stop Islamization of America) but were repeatedly refused because it considered “disparaging” to Muslims. It was, in effect, an application of sharia law (‘do not criticize Islam.’)
Today we had a big victory against this fascist-style ban. The Federal Circuit Court of Appeals just reversed 70 years of holdings that said there is no First Amendment protection in trademark cases. In reversing, it held as unconstitutional the “disparaging” prohibition, citing SIOA first and frequently.
What a wonderful Christmas miracle :)
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 pro- scription of § 2(a) is unconstitutional.
The USPTO had rejected AFDI’s trademark application based on the following analysis:
“Islamisation” means converting to Islam or “to make Islamic;” and (2), “Stop” would be understood to mean that “action must be taken to cease, or put an end to, converting or making people in America conform to Islam.” Thus, the trademark, according to the “Office Action” ruling, disparaged Muslims and linked them to terrorism. (AFLC)
The court concludes that “Stop the Islamization of America” mark, as used by its promoters, is likely to be understood as “disparaging to a substantial composite” of Muslims, whether “Islamization” refers to conversion to Islam or to “a political movement to replace man-made laws with the religious laws of Islam.”
Now that Federal Circuit Court of Appeals has held as “unconstitutional” the disparaging prohibition we are going to move forward with getting our trademark.
government enacted this law—and defends it today— because it disapproves of the messages conveyed by disparaging marks. It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle governs even when the government’s message-discriminatory penalty is less than a prohibition.
Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communi- ties. But the First Amendment protects even hurtful speech.
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 pro- scription of § 2(a) is unconstitutional. Because the gov- ernment has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.
This is a big case – and it won’t only affect us but the Washington Redskins, the rock band
Here are some of the salient pssages in the finding:
Importantly, every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a message that is dis- paraging to certain groups. STOP THE ISLAMISATION OF AMERICA is expressive. In refusing to register the mark, the Board explained that the “mark’s admonition to ‘STOP’ Islamisation in America ‘sets a negative tone and signals that Islamization is undesirable and is something that must be brought to an end in America.’” Geller, 751 F.3d at 1361.
We limit our holding in this case to the constitu- tionality of the § 2(a) disparagement provision. Recogniz- ing, however, that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks, we leave to future panels the consideration of the § 2 provisions other than the disparagement provision at issue here. To be clear, we overrule In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and other precedent insofar as they could be argued to prevent a future panel from considering the constitutionality of other portions of § 2 in light of the present decision.
A disparaging mark is a mark which “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” Geller, 751 F.3d at 1358 (alterations omitted). To deter- mine if a mark is disparaging under § 2(a), a trademark examiner of the PTO considers:
Trademark Manual of Exam. Proc. (“TMEP”) § 1203.03(b)(i) (Jan. 2015 ed.) (citing Geller, 751 F.3d at 1358). If the examiner “make[s] a prima facie showing that a substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark, as used on or in connection with the relevant goods or services, to be disparaging in the context of contempo- rary attitudes,” the burden shifts to the applicant for rebuttal. Id. If the applicant fails to rebut the prima facie case of disparagement, the examiner refuses to register the mark. The Trademark Manual of Examining Procedure does not require an examiner who finds a mark disparaging to consult her supervisor or take any further steps to ensure the provision is applied fairly and consist- ently across the agency. Compare TMEP § 1203.03 (no discussion of action to take if examiner finds mark dis- paraging), with TMEP § 1203.01 (requiring examiner who finds a mark scandalous or immoral to consult his super- visor). A single examiner, with no input from her super- visor, can reject a mark as disparaging by determining that it would be disparaging to a substantial composite of the referenced group.
Second, the disparagement provision at issue is view- point discriminatory on its face. The PTO rejects marks under § 2(a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a positive, non-disparaging man- ner. In this case the PTO refused to register Mr. Tam’s mark because it found the mark “disparaging” and “objec- tionable” to people of Asian descent. Tam, 2013 WL 5498164, at *6. But the PTO has registered marks that refer positively to people of Asian descent. See, e.g., CELEBRASIANS, ASIAN EFFICIENCY. Similarly, the PTO has prohibited the registration of marks that it found disparaged other groups. See, e.g., Pro-Football, 2015 WL 4096277 (affirming cancellation of REDSKINS); Geller, 751 F.3d 1355 (affirming rejection of STOP THE ISLAMISATION OF AMERICA); Lebanese Arak Corp., 94 U.S.P.Q.2d 1215 (refusing to register KHORAN for wine); Heeb Media, 89 U.S.P.Q.2d 1071 (refusing to register HEEB); Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264 (refusing to register SQUAW VALLEY for one class of goods, but registering it for another). Yet the government registers marks that refer to particular ethnic groups or religions in positive or neutral ways—for example,
NAACP, THINK ISLAM, NEW MUSLIM COOL, MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B CATHOLIC.
UPDATE: Here’s our law firm’s take:
As a kind of Christmas present to liberty and the U.S. Constitution, the Federal Circuit Court of Appeals, sitting en banc (the entire court), today reversed more than 30-years of jurisprudence by holding that trademark registration under the Lanham Act deserves First Amendment protection. The import of this holding is that trademarks may no longer be rejected by the United States Patent and Trademark Office (“USPTO”) just because the USPTO believes the mark to be disparaging.
In the case In re Tam, the federal court, which specializes in patent and trademark cases, found that the USPTO’s rejection of the musical group name “The Slants” because it disparaged Asians was unconstitutional because there was no “compelling state interest” to censure the viewpoint of the trademark owner. As a result, Simon Tam will now be able to register his band name as a federal trademark, thus allowing him to protect the name and products and services sold using that name against encroachers and counterfeiters.
What made this decision possible was the recent litigation waged by the American Freedom Law Center (“AFLC”) on behalf of Pamela Geller and Robert Spencer to register their trademark, “Stop the Islamisation of America” (“SIOA”). Like the Slants trademark, the USPTO rejected the SIOA trademark on the ground that it disparaged Muslims and even Islamists by suggesting they should be “stopped.” AFLC argued the case before a three-judge panel of the Federal Circuit Court, which upheld the USPTO ruling of disparagement.
However, on the heels of the SIOA decision, by the time the Slants case found its way to the important Federal Circuit Court, the appellate judges were apparently ready to reverse their prior rulings which rejected any First Amendment arguments. Indeed, the court’s opinion starts off referencing the USPTO’s rejection of the SIOA trademark as a rejection aimed improperly at censuring important expressive speech. The court went on to reference SIOA, and the underlying case of In re Geller, no less than seven times.
David Yerushalmi, AFLC co-founder and Senior Counsel, noted:
“This demonstrates an important adage about good lawfare and good lawyering. Even when you lose initially you may still ultimately prevail because good, hard-fought lawfare has a way of exposing bad law and bad judgments. This is one of those rare instances where a federal court has emphatically and quite properly reversed itself. You can be certain that our clients will now proudly seek federal trademark registration.”
Robert Muise, AFLC co-founder and Senior Counsel, added:
“At the end of the day, this was a complete victory for the First Amendment and an absolute defeat for political correctness. Our SIOA trademark case paved the way for this important decision, reaffirming that hard work, determination, and some good lawyering can create a favorable sea change in the law.”
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