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Disparagement and Trademarks at the US Supreme Court

Posted on Jan 26, 2017 in Articles

This article originally appeared in The Legal Intelligencer on January 25, 2017.

Try to make sense of this: The U.S. Patent and Trademark Office (USPTO) refused to register the trademark “HAVE YOU HEARD THAT SATAN IS A REPUBLICAN?” because it disparaged the Republican party. But when an application was filed for the mark “THE DEVIL IS A DEMOCRAT,” the USPTO agreed that the mark could be registered.

Look closely at 15 U.S.C. Section 1052(a) and the root of the problem comes to light: “No trademark … shall be refused registration … unless it … consists of … matter which may disparage.” Should the U.S. government be in a position to decide whether language is disparaging? Even if it is disparaging, should the U.S. government deny the benefits of federal registration to a trademark owner? For that matter, by refusing federal trademark registration on the basis of language, does Section 1052(a) violate the First Amendment right to freedom of speech? These and other questions captured the intellectual property spotlight last week, as oral argument at the U.S. Supreme Court took place in Lee v. Tam (15-1293).

Simon Tam runs a band called “The Slants”—a group of Asian-American musicians. In naming his band, and as set forth in his brief, Tam engaged in ­”reappropriation, whereby members of minority groups have reclaimed terms that were once directed at them as insults and redirected the terms outward as badges of pride.” When Tam tried to register THE SLANTS as a service mark with the USPTO, his application was refused; he was told that his service mark was disparaging and violated Section 1052(a). On appeal to the Trademark Trial and Appeal Board (TTAB), he was again refused registration on the basis of disparagement. Tam took his case to the U.S. Court of Appeals for the Federal Circuit, which sided with TTAB and refused registration of the mark. But in an unusual sequence of events, the Federal Circuit reheard the case en banc and then sided with Tam. The USPTO filed a petition for writ of certiorari with the U.S. Supreme Court—which was granted. Oral argument took place Jan. 18.

Malcolm Stewart, deputy solicitor ­general for the Department of Justice, argued on ­behalf of the USPTO. John Connell of Archer and Greiner argued on behalf of Simon Tam.

During oral argument, Justice Stephen Breyer asked Stewart to explain the purpose or objective of the disparagement provision of Section 1052(a). Stewart responded that the function of a trademark is to tell the public the source of a good or service, and that while a trademark “is not expressive in its own right” it may convey other meanings (such as an advertisement or positive message) that can distract a consumer from a trademark’s source ­identification. “Congress says” remarked Stewart, that “as long as you are promoting your own product, saying nice things about people, we’ll put up with that level of distraction.”

But Breyer was skeptical: “I can think probably, and with my law clerks, [of] ­perhaps 50,000 examples of instances where the space the trademark provides is used for very distracting messages, ­probably as much or more so than … disparagement. And what business does Congress have picking out disparagement, but letting all the other distractions exist?”

Justice Elena Kagan was also critical of Section 1052(a). She remarked, “I always thought that government programs were subject to one extremely important constraint, which is that they can’t make distinctions based on viewpoint.” She then asserted that Section 1052(a) had made such impermissible distinctions: “The point is that I can say good things about something and receive a registration, but I can’t say bad things about something [because my registration will be refused. And I would have thought that that was a fairly classic case of viewpoint discrimination.” Stewart responded, “Again, we’re not saying you can’t say anything bad. We’re saying we don’t register your trademark if it’s disparaging.” “No, no, no,” Kagan replied, “Even in a government program, even assuming that this is not just a classic speech restriction, you’re still subject to the constraint that you can’t discriminate—on the basis of viewpoint.” Later on she added, “Even government programs are subject to this constraint, which is that you can’t distinguish based on the viewpoint of a speaker.”

Near the start of Tam’s oral argument, Connell remarked, “In this case, the ­government has used the disparagement clause to selectively deny those legal benefits to a mark holder expressing negative views that the government disfavors, as opposed to mark holders who received those benefits because they express neutral or positive views that the government does favor.

Justice Sonia Sotomayor pointed that Tam could sue to obtain protection of his mark, despite not having a federal trademark registration. But Connell responded that Tam would not receive all the benefits of a trademark that had a federal registration. The unfair competition ­statute (but not the federal trademark statute) would be ­available to Tam, and state trademark law would be available to Tam, “none of which have the extensive and substantial benefits that this court has recognized under trademark registration.”

Kagan later asserted that aspects of ­federal trademark registration are “something approaching” government speech: “The government republishes registrations, communicates registrations and so forth. And doesn’t that aspect of the program give the government greater leeway here than it would in a typical program in which no government speech itself is involved?” Connell disagreed: “It does not. The register simply serves as a recordation of the marks that the government has approved according to the statutory criteria. This is in no way different than copy[right] registration, patent registration, marriage license registration, car registrations, and other kind of typical government registrations that are simply ministerial. The government is not speaking.”

Chief Justice John Roberts stated, “You’ve said … several times that the problem is that the government is burdening noncommercial … aspects of the trademark, but it seems to me that that’s an awfully blurry line. … How do you tell the difference between the commercial aspect of the trademark and the noncommercial aspect?” Connell replied, “The commercial aspect is that part of the mark that simply identified the source of the good or service in question. In the case of The Slants, there’s another component, that being the noncommercial, which ­communicates the political and social message of Asian pride.”

How will the Supreme Court rule? While it is impossible to predict, the justices seemed to be critical of the disparagement provision of Section 1052(a); they didn’t seem to buy the USPTO’s arguments. And while they questioned Tam’s position, they seemed to be receptive to the answers they received. Perhaps there will be a time in the future when federal trademark registration will be available, and disparagement will not be an issue.

– by Lawrence Ashery


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