June 22, 2017
By: Nathan T. Harris
The Supreme Court has held that the statute barring registration of “disparaging” trademarks with the United States Patent & Trademark Office (USPTO) violates the Free Speech Clause of the Constitution. Writing for the majority, Justice Alito affirmed the Federal Circuit’s en banc ruling invalidating the statute as facially overbroad. He concluded that the provision is an impermissible viewpoint restriction that does not survive the intermediate scrutiny applied to commercial speech, much less the strict scrutiny typically applied to restrictions on noncommercial speech.
Simon Tam applied to register the mark THE SLANTS in connection with his dance band of the same name. Mr. Tam chose the name—historically a racial slur against Asians—in an attempt to reclaim the term by draining it of its shock value. The application was refused under 15 U.S.C. § 1052(a), which in part bars registration of any mark that may disparage or bring into “comtemp[t] or disrepute” any person living or dead, or any institution, belief, or national symbol. Mr. Tam’s appeal at the USPTO was denied, but the Court of Appeals for the Federal Circuit reversed the refusal, finding the statute to be viewpoint-based discrimination that impermissibly regulates the expressive aspects of trademarks. The Government, on behalf of the USPTO, petitioned for review by the Supreme Court, which agreed to hear the case.
The Government argued that its registration of marks constituted government speech, and pushed for the more permissive review of speech restrictions applied when the government is speaking, not regulating speech. The majority disagreed. As Justice Alito pointed out, the USPTO does not have a hand in “dream[ing] up” or editing the trademarks applied for by the public. Apart from the provision at issue, the statute compels the USPTO to register a mark that meets certain technical and non-viewpoint-based requirements. Once a mark is registered, the USPTO cannot remove it from the register unless it is successfully challenged or abandoned. It is therefore “far-fetched” to consider the content of trademarks to be government speech.
The majority highlighted the factual differences in this case from some of its earlier decisions, including a case in which specialty license plate designs were held to be government speech. It noted that a license plate serves as a form of government ID, and is manufactured and owned by the state; it is therefore “often closely identified in the public mind” with the state. By contrast, the average person likely does not understand the implications of trademark registration, and would not associate the expressive content of a trademark with the government simply because it is registered.
The Court also rejected the Government’s argument that registration “subsidizes” speech expressing a particular viewpoint by conferring the benefits associated with registration. Previous decisions in this area involved cash or other payments being paid to private parties, such as the National Endowment for the Arts or public libraries. Here, by contrast, trademark registrants pay fees to register their marks. To the extent that trademark registration confers a benefit, so does nearly every other government service, from adjudicating lawsuits to issuing fishing licenses.
The Court declined to decide whether the expressive content of a trademark constitutes pure expressive speech—on which any proposed restriction is subject to strict scrutiny—or, alternately, whether a trademark is commercial speech that can be more easily regulated. It found that the disparagement provision at issue here does not survive even the relaxed scrutiny applied to commercial speech, because the provision is not narrowly drawn to serve a substantial interest. While the Government argued that preventing offensive speech was a substantial interest, the Court countered that this position “strikes at the heart of the First Amendment,” which protects even hateful speech.
The Government also argued that it had a substantial interest in preventing trademarks that discriminate on the basis of race, gender, or other classifications from disrupting commerce. But as the Court noted, the provision is not so narrowly drawn; “[i]t is not an anti-discrimination clause; it is a happy-talk clause.” For example, the disparagement provision prohibits registration of anti-discriminatory marks such as “down with racists.” For that reason, “it goes much further than is necessary to serve the interest asserted.” The Court also questioned whether commerce would really be disrupted by trademarks disparaging the dead or institutions, such as “James Buchanan was a disastrous president” or “slavery is an evil institution.”
Because the disparagement clause is not narrowly tailored to a substantial interest, the Court held that it violates the free speech protections of the First Amendment.
This decision gives new life to the Washington football team that has fought for years to maintain its registered mark REDSKINS in the face of challenges under the disparagement provision. It is also worth noting that the statute at issue here similarly bars registration of “scandalous” and “immoral” marks. While those provisions were not explicitly addressed in this decision, the Court observes that “giving offense is a viewpoint,” suggesting that the prohibition on scandalous and immoral marks may similarly run afoul of the First Amendment.
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