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Trademarks and the First Amendment Considered by Supreme Court

Posted on Jul 26, 2017 in Articles

This article originally appeared in The Legal Intelligencer on July 26, 2017.

When I studied constitutional law in law school, one subject was certainly never mentioned in that class: trademarks. After last month’s U.S. Supreme Court decision in Matal v. Tam (582 U.S. ____ (2017)), that may change.

Simon Tam is the lead singer for an ­Asian-American rock band called The Slants. He chose the name of his band in order to “reclaim” and “take ownership” of a stereotype about people of Asian ­ancestry. By including the word “Slants” in his band’s name, Tam sought to “reappropriate” the term, so that it would lose its derogatory nature and be seen instead as a source of pride.

He sought registration of the service mark The Slants in the U.S. Patent and Trademark Office (USPTO), an important step in establishing his band and seeking business deals with record companies. But the USPTO refused, concluding that the name of his band The Slants was offensive, and citing what has been called “the disparagement clause” of the federal trademark laws (“No trademark … shall be refused registration unless it … consists of … matter which may disparage,” 15 U.S.C. Section 1052(a)). Tam argued that the word Slant was not ­inherently ­offensive—it could be used to describe a line at an angle. But the USPTO ­refused registration based on how Tam used the mark “as the name of an all ­Asian-American band.” In other words, ­because Tam was seeking protection for the service mark The Slants as an individual of Asian descent, the USPTO ­concluded that his mark was disparaging, and therefore refused to register the mark.

Tam filed an appeal to the Trademark Trial and Appeal Board (TTAB), an ­administrative tribunal of the USPTO, and made the following argument: “By the USPTO’s logic, the same exact service mark registration application submitted by a non-Asian would be entitled to registration. The Slants, the USPTO admits, is not ­inherently offensive. … The Slants could be registered as a trademark—just not by Asians.”

Tam lost at the TTAB, and subsequently at the U.S. Court of Appeals for the Federal Circuit. But, the Federal Circuit issued a supplemental opinion, reconvened en banc, and ruled that Tam’s First Amendment ­freedom of speech rights had been ­violated. The USPTO filed a petition for writ of ­certiorari in the U.S. Supreme Court, which was subsequently granted. Oral ­argument took place in January, and the Supreme Court issued its opinion in June.

In a stunning victory for Tam, the Supreme Court (in an 8–0 decision) held that Tam’s First Amendment rights had been violated. Said the court, the disparagement clause of the federal trademark laws ­”offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The government had argued to the Supreme Court that trademark registration in the United States is not subject to First Amendment protection—and therefore Tam was not entitled to his registration—for three reasons.

First, the government contended that trademarks are government speech, and not private speech, and therefore exempt from First Amendment protection. The Supreme Court disagreed and provided an ­illustrative example. During World War II, the government distributed posters to promote the war effort. While the posters expressed a viewpoint, the government was not required to balance that message with another message encouraging Americans to refrain from supporting the military. “The ­government’s own speech … is exempt from First Amendment ­scrutiny” (citing Board of Regents of University Wisconsin System v. Southworth, 529 U.S. 217, 235 (2000)). But while trademarks are registered by the federal government, “The federal government does not dream up these marks.” Therefore “In light of all this” stated the court, “it is far-fetched to suggest that the content of a registered mark is government speech. … And there is no ­evidence that the public associates the ­contents of trademarks with the federal government.” Thus, concluded the Supreme Court, “Trademarks are private, not ­government, speech.”

Second, the government argued that because trademark registration is a ­government program, trademark protection is subsidized by the government, and “government is not required to subsidize ­activities that it does not wish to promote.” This argument was nonpersuasive as ­virtually every ­government program carries with it financial expenditure (e.g., copyright registration on the federal level and driver licenses on the state level). The financial overhead of a governmental entity providing services is different from the case law that the government relied upon before the Supreme Court—situations where the ­government provided cash subsidies. The fact that a program is administered (and paid for) by the government does not eliminate First Amendment ­protection for that which is benefited by that program.

Third, the government urged that the trademark disparagement clause did not ­violate the First Amendment under a doctrine that combined the “government speech” (first) argument and the ­government subsidy (second) argument. This argument was found to be unpersuasive as well: “We have said time and again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers'” (citing Street v. New York, 394 U.S. 576 (1969)) and “If there is a bedrock principle ­underlying the First Amendment, it is that the ­government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”

Given the remarks made by the ­justices during oral argument, the decision was not surprising (in my opinion). When the ­government’s attorney argued that ­suppressing speech and registering a trademark are two different things, Justice Elena Kagan strongly disagreed: “No, no, no,” she 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.” And when Justice Kagan later asserted that federal ­trademark registration is “something approaching” government speech, Tam’s ­attorney disagreed, citing copyright ­registrations and marriage licenses as ­examples. “The government,” his attorney argued, “is not speaking.”

The opinion concluded with a strong backing for the First Amendment: “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is ­hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that 
we hate.'”

In the wake of the Tam decision, the Department of Justice (DOJ) dropped its fight with the Washington Redskins to ­cancel the Redskins service mark. The DOJ had been fighting the Redskins over their mark after a group of Native Americans urged cancellation of their service mark on the basis of the mark being disparaging. While Tam and the Redskins were both arguing over the same statute (against disparaging trademarks), the two cases are very different. The Slants mark was determined to be disparaging by the USPTO (i.e., the government), while the Redskins mark was disparaging to a group of Native Americans (although a poll conducted by the Washington Post in 2016 found that most Native Americans were not offended by the Redskins mark). When the Supreme Court determined that the disparagement clause of the trademark statute was ­unconstitutional, both controversies came to an end.

The section of the statute that was ­litigated in the U.S. Supreme Court also applies to marks that are “immoral” and “scandalous.” The Supreme Court said nothing about those aspects of the 

The question remains as to whether the USPTO will now receive many trademark registration applications for trademarks that are disparaging. With the USPTO no longer able to refuse such registrations, the filing of many such applications seems plausible.

– By Lawrence E. Ashery


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