14 January, 2016

A Different Slant on Things - Disparaging Trademarks Infringe US First Amendment

As a global society we have come a long way when it comes to racial equality and acceptance. Whether there is true equality and no lingering issues is a strong point of contention, and arguably something that will never be wholly equal, but we have come a long way when it comes to the terminology employed when discussing those of different ethnic background. Even so, there still are huge tensions when it comes to the use of racially derogatory terms, and in the light of the recent Washington Redskins litigation (discussed more here) it has become more poignant than ever in conjunction with trademarks. In similar proceedings, in In Re Tam (discussed more here), the Court of Appeals saw that the use of derogatory terminology would not infringe free speech under the First Amendment to the US Constitution, and would, therefore, not be registrable. The Court then issued a rehearing of the case sua sponte (without any applications from either party to do so), for which a decision was handed down just before Christmas 2015.

As the case's facts have been presented in the article published on this very blog earlier, they will be discussed only briefly. The case of In Re Simon Shiao Tam dealt with Mr. Tam and his band The Slants. The name, a term described as offensive to Asians, was used by the band in an effort to reclaim the negative term and to use it to inspire those of Asian heritage to embrace who they are, even in the face of negativity. Mr. Tam filed an application to register the name as a trademark in the US; however, his application was rejected as being 'disparaging' towards Asians under 15 USC § 1052. He appealed the subsequent decisions, arguing that the rejection impeded his rights under the First Amendment (an argument that was also rejected in earlier proceedings), finally ending up in the sua sponte proceedings in question.

Does section 2(a) restrict freedom of speech?

The Court, in the judgment of Judge Moore, goes onto great lengths discussing the impact that the section has, or could have, on the expression embodied in a given (applied for or registered) trademark. The Court asserts that the section "... does more than discriminate on the basis of
topic... [but] also discriminates on the basis of message conveyed". As the government, through the USPTO, rejects marks on a prima facie assessment of the message contained or conveyed through them, it will in some instances prevent the expression using those marks by rejecting them. It should, arguably allow all expression or none of it, should it be disparaging or potentially disparaging. Although they defend that the rejections only reject certain words and not viewpoints, one could argue, and the Court agreed, that this is indeed a rejection of a particular viewpoint, rather than a mere word or words (i.e. a negative viewpoint).

The Court further highlighted the often dual-expression contained in a trademark, and the regulation of its 'commercial speech', rather than its concrete expression, would not deflect its standards under the First Amendment. By rejecting a mark the government is rejecting the expression contained in that mark, no matter if its used for a commercial purpose (as commercial speech) or not. The Court concluded that the government did indeed restrict speech through section 2(a).

Trademarks can be used even if not registered, or are government speech

The government defended the section through asserting that it does not prevent the party from using the mark (i.e. they can still call themselves The Slants, just will not be able to register the name). The Court's focus on this was in relation to the benefits lost by the parties who faced rejection, even though they could use the name, deeming it an imposition of their freedom of speech. Arguably, the loss of a trademark through registration might push the parties to changes names to ones where they can enjoy the benefit of registration, which would prevent free speech indirectly. The value in registration if significant, and preventing the parties from enjoying this would create a disincentive to register potentially disparaging marks.

Little Timmy didn't realize just how insensitive
he was with his expression
In Judge Moore's mind this would be a significant chilling effect on free speech in the marketplace, and contrary to the First Amendment. Mr. Tam would, even in the absence of a registration, be able to defend the band's name under common law (although, Judge Moore pointed out, this would be highly unlikely), the rejection would still deny him the significant benefits that registration would afford him.

The government also asserted that a trademark registration is government speech, and therefore not covered by the First Amendment. This does not, however, include the registrant's use of the mark, but merely the act of registration or rejection of that mark. One can appreciate that the registration of a mark does not convey any endorsement or approval of a product or service adorning the mark registered, and thus, arguably at least, would not amount to any form of government speech, nor would the inclusion of the ® symbol do the same (contrary to the government's argument to the latter). Clearly, the conversion of any speech into government speech by the mere registration or affixing of the ® symbol would allow for the government to regulate that speech without infringing the First Amendment. The Court therefore swiftly rejected this argument, acknowledging the slippery slope this would create with all government registrations and their suppression on a whim. As Judge Moore summarized: "When the government registers a trademark, it regulates private speech. It does not speak for itself".

Is the registration of a trademark a subsidy?

The Court also discussed whether the registration of a mark would amount to a subsidy, but in the end strongly rejected this notion, as the denial of a benefit to a citizen under the rationale of restricting their speech (by disincentivizing their expression through the loss of these benefits). Also, as the Lanham Act derives itself from the Commerce Clause and not the Spending Clause (which allows the government to set conditions to the benefits that derive from it), it is further evidence that the registration of a trademark is not a subsidy. The Court concluded that the section is not a subsidy, and does not therefore avoid strict scrutiny.


The Court rejected the government's arguments and deemed section 2(a) to be unconstitutional. The case did provoke a great deal of discussion among the judges, with several concurring and/or dissenting judgments being handed down, demonstrating just how unsure the judiciary is on the section. Yet, this writer is sure that all of the judges can agree on one position, expressed by Judge Moore: "Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate“".

The case does have a significant effect on the up-coming Redskins case, which is set for its appeals hearing later this year. Whether they adopt the position set by the Court in this case remains to be seen, but this writer would imagine the assertion that section 2(a) is unconstitutional to stick, unless the Fourth Circuit conjures up a novel way of avoiding the extensive considerations above. Nevertheless, it would set the stage for a Supreme Court decision on the case; one which many would undoubtedly welcome.

Source: Washington Post

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