Appeals Court Says US Government Cannot Deny Trademarks For Being 'Disparaging'

from the fans-of-that-dc-football-team-celebrate dept

While everyone's been focused on the big dispute over the name of the NFL team from Washington DC... and whether or not it's appropriate for the US Patent and Trademark Office to take back the team's trademark, observant trademark watchers knew that the case to watch on this issue involved a dispute over the trademark for the band "The Slants." The band, whose members are Asian Americans, sued after the USPTO rejected their attempt to trademark the name of the band, claiming that the name was a disparaging term for Asians. The key argument: is it a violation of the First Amendment for the Lanham Act (the law under which registered Federal trademarks exist) to allow the USPTO to reject trademarks for being disparaging. Specifically, Section 2(a) says that:
No trademark... shall be refused registration... unless it... Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute...
And thus, the question is whether or not this is a law regulating speech based on content, which is not allowed under the First Amendment. I've struggled with this issue in the past, originally coming down on the side of saying that it's not a First Amendment violation, because not giving someone a trademark doesn't do anything to restrict speech. In fact, I originally argued, it does the opposite. Rejecting a trademark leaves speech more open for anyone to use.

Over the past twelve months, however, after discussing the issue with a bunch of lawyers (on both sides of the issue), I've changed my mind, and I see the key point: this is still a law that is based on the content of speech, and that's problematic under the First Amendment. And, now in the case involving the Slants, court of appeals for the Federal Circuit (CAFC) has agreed. The Lanham Act's prohibition on issuing trademarks if they're disparaging is unconstitutional.

The key issue: "content-based regulations are presumptively invalid." And this is a content-based regulation.
It is beyond dispute that § 2(a) discriminates on the basis of content in the sense that it “applies to particular speech because of the topic discussed.”... Section 2(a) prevents the registration of disparaging marks—it cannot reasonably be argued that this is not a content-based restriction or that it is a contentneutral regulation of speech. And the test for disparagement— whether a substantial composite of the referenced group would find the mark disparaging—makes clear that it is the nature of the message conveyed by the speech which is being regulated. If the mark is found disparaging by the referenced group, it is denied registration. “Listeners’ reaction to speech is not a content-neutral basis for regulation.”
The court rejects the claim by the government that the rejection is still "content neutral" because it would reject the same term even if it were meant to be supportive, rather than disparaging. In fact, it points out that The Slants clearly are not trying to be insulting to Asian Americans as proof of this. But the court notes that this claim is basically completely bullshit:
The government’s starting point—that it rejects marks conveying diametrically opposed viewpoints, if they contain the same offensive word—is incorrect. The PTO looks at what message the referenced group takes from the applicant’s mark in the context of the applicant’s use, and it denies registration only if the message received is a negative one. Thus, an applicant can register a mark if he shows it is perceived by the referenced group in a positive way, even if the mark contains language that would be offensive in another context. For example, the PTO registered the mark DYKES ON BIKES, U.S. Reg. No. 3,323,803, after the applicant showed the term was often enough used with pride among the relevant population. In Squaw Valley, the Board allowed the registration of the mark SQUAW VALLEY in connection with one of the appliedfor classes of goods (namely, skiing-related products), but not in connection with a different class of goods.... Section 2(a) does not treat identical marks the same. A mark that is viewed by a substantial composite of the referenced group as disparaging is rejected. It is thus the viewpoint of the message conveyed which causes the government to burden the speech. This form of regulation cannot reasonably be argued to be content neutral or viewpoint neutral.
The court goes on to note other examples of rejected trademarks, noting that it clearly involves the Trademark Office deciding the nature of expressive speech and whether or not it is appropriate.

As for my original argument that rejecting a trademark restricts no speech, the court (rightly, I now believe) rejects that argument as well, basically saying that it still serves to silence certain forms of speech by choosing to remove a benefit based on the content of that speech. And that creates a burden based on content, which is not allowed under the First Amendment.
The general principle is clear: “Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content.” ... “[T]he government’s ability to impose content-based burdens on speech raises the specter that the government may effectively drive certain ideas or viewpoints from the marketplace.” ... A law may burden speech even when it does so indirectly. In Sorrell, the challenged statute did not directly ban speech, but rather forbade certain pharmaceutical marketing executives from obtaining and using information that could help them market their products more effectively.... The Court found that the state “ha[d] burdened a form of protected expression,” while leaving “unburdened those speakers whose messages are in accord with its own views.” ...

Here, too, § 2(a) burdens some speakers and benefits others. And while it is true that a trademark owner may use its mark in commerce even without federal registration, it has been widely recognized that federal trademark registration bestows truly significant and financially valuable benefits upon markholders....

Denial of these benefits creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging.
It further notes that the vagueness in what may or may not be granted a trademark also leads to uncertainty, and "such uncertainty of speech-affecting standards has long been recognized as a First Amendment problem" that may contribute "significantly to the chilling effect on speech."

The court also rejects the argument that because granting a trademark is simply a form of government speech, there's no First Amendment issue here either. The court basically says "uh, no," and points out that under this theory, anything covered by copyright would become "government speech" immune from the First Amendment.
This argument is meritless. Trademark registration is a regulatory activity. These manifestations of government registration do not convert the underlying speech to government speech. And if they do, then copyright registration would likewise amount to government speech. Copyright registration has identical accoutrements—the registrant can attach the © symbol to its work, registered copyrights are listed in a government database, and the copyright owner receives a certificate of registration. The logical extension of the government’s argument is that these indicia of registration convert the underlying speech into government speech unprotected by the First Amendment. Thus, the government would be free, under this logic, to prohibit the copyright registration of any work deemed immoral, scandalous, or disparaging to others. This sort of censorship is not consistent with the First Amendment or government speech jurisprudence.
Various attempts to say that trademarks are just "commercial speech" and thus get less scrutiny are rejected throughout the ruling, noting that it's the expressive speech of users that would be hindered by keeping trademark law as is. And then even if it is commercial speech, the court still says this part of the Lanham Act is no good:
First, we ask whether the regulated activity is lawful and not misleading.... Unlike many other provisions of § 2, the disparagement provision does not address misleading, deceptive, or unlawful marks. There is nothing illegal or misleading about a disparaging trademark like Mr. Tam’s mark.

Next, for speech that is lawful and not misleading, a substantial government interest must justify the regulation.... But § 2(a) immediately fails at this step. The entire interest of the government in § 2(a) depends on disapproval of the message. That is an insufficient interest to pass the test of intermediate scrutiny, as the Supreme Court made clear in Sorrell... (law must not “seek to suppress a disfavored message”);
What about not spending taxpayer money approving racist messages? Well, the court points out, trademark registration is funded by applicants, not taxpayers, so that one fails too.

And, yes, the court admits, racist and disparaging speech may be troubling and we may not like it, but that doesn't mean the government should be in the business of deciding what is and what is not appropriate.
Moreover, at the level of generality at which the government invokes “racial tolerance,” it is hard to see how one could find that § 2(a) “directly and materially advanc[es]” this interest and is narrowly tailored to achieve that objective.... Disparaging speech abounds on the Internet and in books and songs bearing government registered copyrights. And the PTO has granted trademark registrations of many marks with a racially charged character.
The court concludes by noting that it's not endorsing disparaging speech -- even the name of the band in this case. It's not endorsing a trademark on "The Slants." It's just noting that §2(a) appears to be unconstitutional for violating the First Amendment.
Although we find the disparagement provision of § 2(a) unconstitutional, nothing we say should be viewed as an endorsement of the mark at issue. We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities. Even Mr. Tam, who seeks to reappropriate the term “slants,” may offend members of his community with his use of the mark.... But much the same can be (and has been) said of many decisions upholding First Amendment protection of speech that is hurtful or worse. Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate.”... The First Amendment protects Mr. Tam’s speech, and the speech of other trademark applicants.
There is also a concurring opinion that says that beyond the fact that Section 2(a) is a violation of the First Amendment it's also a violation of the Fifth Amendment for being "unconstitutionally vague," specifically arguing that the term "may disparage" leaves things wide open in a way that is unconstitutional. There's another concurrence that includes a partial dissent, arguing that the commercial speech argument is not correct, and noting that the Trademark Office is not rejecting speech that offends the government, but rather which offends "a substantial composite of the referenced group." Finally, there are two more dissents. The first is on the First Amendment issue, saying that the USPTO's rejection of a trademark doesn't harm anyone's free expression rights. The second one argues that the government has a "substantial interest" in refusing to allow such trademarks. Feel free to read the arguments on that below.

What will be interesting is if the government seeks to appeal this to the Supreme Court (and whether or not the Supreme Court takes the case). It's possible that any Supreme Court decision may wait and depend on a ruling in the case about the Redskins trademark (which is in the 4th Circuit). If that court rules differently then it's much more likely that the Supreme Court will take on this issue to clear up the circuit split. If the 4th Circuit sides with the Redskins, then there will be two such rulings on the books in different circuits. But, for Redskins fans who don't want that name to go away, today's court ruling is a big win in your favor. And while I'll admit I'm no fan of the Redskins name, I'm now pretty firmly in the camp that agrees with the First Amendment argument that it's not the government's place to decide whether the speech is disparaging or not.

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  • identicon
    Anonymous Coward, 22 Dec 2015 @ 10:48am

    Mental Dissonance

    I've struggled with this issue in the past, originally coming down on the side of saying that it's not a First Amendment violation, because not giving someone a trademark doesn't do anything to restrict speech

    It never ceases to amaze me that despite the fact that you work for a website that talks about chilling effects, slippery slopes, dmca abuses, and all sorts of chicanery of this ilk you still have the nerve to allow or support a government agency to arbitrarily suspend someones rights just because you or they believe a term is derogatory.

    Hypocrisy is probably one of the most noteworthy evils humans persistently engage in without remorse.

    If someone wants to create a disparaging trademark, give it to them, the the court of public opinion decide their fate.

    Our pursuit of tolerance has lead to complete intolerance, and will only destroy this nation as we become a complete pack of sissies unable to withstand even the most paltry of insults.

    The moment you feel insulted by an insult is the moment you deserved that insult!

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Anonymous Coward, 22 Dec 2015 @ 11:01am

      Re: Mental Dissonance

      Hmmmm, no credit for having struggled with it, and changed his mind?

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 22 Dec 2015 @ 11:28am

        Re: Re: Mental Dissonance

        You are right, props should be given for him changing his mind.

        I should have noted this in my post, so yes the author does deserve props for it!

        I stand Amended!

        reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 22 Dec 2015 @ 11:13am

      Re: Mental Dissonance

      ikr, i haven't agreed with any of techdirt's writers on this topic

      reply to this | link to this | view in chronology ]

    • identicon
      AJ, 22 Dec 2015 @ 11:19am

      Re: Mental Dissonance

      "you still have the nerve to allow or support a government agency to arbitrarily suspend someones rights just because you or they believe a term is derogatory."

      I have to agree. But I think like the AC posted, I'm going to give him credit for changing his mind. It looks like he worked himself through it and came out with the right answer.

      "Our pursuit of tolerance has lead to complete intolerance, and will only destroy this nation as we become a complete pack of sissies unable to withstand even the most paltry of insults."

      Could not agree with you more. Soooo tired of seeing the pussification of our society. The "everyone gets a trophy", "free speech zone", "identifying as a specific gender", bullshit is going to turn us all into a bunch of robot screwing pacifists who scream like children at the first sign of conflict.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 22 Dec 2015 @ 11:30am

        Re: Re: Mental Dissonance

        You are right the writer does deserve credit where it is due, I should have noted this in my post instead of drooling all over myself in my tirade!

        reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 22 Dec 2015 @ 11:29am

      Re: Mental Dissonance

      "Hypocrisy is probably one of the most noteworthy evils humans persistently engage in without remorse."

      wtf - seriously?

      It's good to know that all other "evils" have been squelched to the point that being a hypocrite is the worst thing people do these days. In the past we had to deal with violent crimes like rape and murder, not to mention the greed driven corruption and violence perpetrated upon the least able to defend themselves. How refreshing that humanity has advanced beyond their tainted past.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 22 Dec 2015 @ 11:35am

        Re: Re: Mental Dissonance

        I said "probably one of", this in no way indicates that a change has occurred in the other nasty businesses we engage in.

        Calling hypocrisy one of our most evil attributes in no way should be construed to lighten the severity of rape or murder the way that you have implied, and you should be ashamed of yourself for it.

        You might have some issues yourself that could use some attention with how that logic of yours if working out. You may have just went off the deep end just a tad there!

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 22 Dec 2015 @ 11:49am

          Re: Re: Re: Mental Dissonance

          "and you should be ashamed of yourself for it."

          Yes - mom ... I'm probably sooo ashamed. I have so many issues to deal with, it's just horrible how I call out people on their bullshit.

          reply to this | link to this | view in chronology ]

          • identicon
            Anonymous Coward, 22 Dec 2015 @ 12:12pm

            Re: Re: Re: Re: Mental Dissonance

            Nothing I said was BS, seems like you are so full of it that your eyeballs are floating and thus only able to see BS everywhere you look now.

            Did you fail English by chance? Your reading comprehension skills seems to be lacking.

            reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 22 Dec 2015 @ 11:31am

      Re: Mental Dissonance

      Yes, Masnick! How dare you not be a complete robot with a consistent stance on a topic from the moment you conceive of a personal position on the matter until the end of time! That you would engage in a manner of human deliberation on such a topic is simply irresponsible and unreasonable!

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 22 Dec 2015 @ 11:41am

        Re: Re: Mental Dissonance

        I was primarily focused on his original siding with the dark side on this. I made other notes (after some insight from other techdirters) to give him props for seeing reason in the end and joining the Light... he can be a Jedi now... well maybe... we will have to see what the future holds!

        reply to this | link to this | view in chronology ]

    • icon
      Mike Masnick (profile), 22 Dec 2015 @ 1:30pm

      Re: Mental Dissonance


      It never ceases to amaze me that despite the fact that you work for a website that talks about chilling effects, slippery slopes, dmca abuses, and all sorts of chicanery of this ilk you still have the nerve to allow or support a government agency to arbitrarily suspend someones rights just because you or they believe a term is derogatory.


      1. I changed my position on this, as is clearly stated in the article.

      2. My issue was not with the suspension of someone's rights. As noted, my argument was that not getting a trademark does not impact anyone's rights, because it is not limiting speech. However, I now see the problem with the law.

      If someone wants to create a disparaging trademark, give it to them, the the court of public opinion decide their fate.


      I agree with that sentiment and did from the beginning. My issue had nothing to do with the appropriateness of disparaging terms or trademarks, but solely whether or not it was a First Amendment violation.

      The moment you feel insulted by an insult is the moment you deserved that insult!


      Again, my argument had nothing to do with whether insulting language is okay. Just whether or not the trademark issue impacted the First Amendment.

      reply to this | link to this | view in chronology ]

      • icon
        Wyrm (profile), 23 Dec 2015 @ 9:13am

        Re: Re: Mental Dissonance

        As I see it, you first considered that trademark restricts free speech, so no trademark is not a restriction on free speech. That's a valid position if you oppose the concept of trademark in its entirety.

        Then you decided that, in the framework of trademark law, not granting a trademark is a restriction of free speech. Whether you oppose trademark in general or not is irrelevant: as long as we do have trademarks, it's not up to the government to decide what your brand name is. That's also a valid opinion in my eyes.

        Nothing wrong in either stance. I think they're not even in contradiction.

        reply to this | link to this | view in chronology ]

  • icon
    fgoodwin (profile), 22 Dec 2015 @ 10:57am

    Hail to the Redskins!

    Hopefully, this means the end of the federal government's persecution of the Washington Redskins!

    reply to this | link to this | view in chronology ]

  • icon
    kenichi tanaka (profile), 22 Dec 2015 @ 11:12am

    This is one case where the USPTO was quite correct. "The Slants" should never get a trademark on the name. Just because they are "Asians" doesn't mean they are entitled to flaunt an ethnic slur in the faces of everyone else. It would be the same if Native Americans were given the trademark over the Washington "Redskins".

    If you allow one group to trademark names that are 'ethnic' slurs then you have to give everyone that right.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Dec 2015 @ 11:24am

    Government speech vs regulation

    Earlier, the Supreme Court ruled that specialty plates were government speech. Fair enough. The state publishes those plates.

    But vanity plates (IE the plates with owner-defined text) are not government speech. (Also.) Yet the Indiana Supreme Court declared that no, it was government speech that was being regulated.

    IANAL, but I think this case bears upon the Indiana license plate case, regarding what speech is whose.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 22 Dec 2015 @ 11:44am

      Re: Government speech vs regulation

      Sadly our court system is ran by humans with political ambitions.

      I cannot remember the last time the legislature has destroyed a court for misapplying the law, I think it is time it happened against if for nothing else than to make some examples and to send errant judges on both sides of the political spectrum a message about abusing their positions on the bench for politics.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Dec 2015 @ 12:13pm

    Amusing, considering there's been a band called The Chinkees that is made up of Asian-Americans since the 90s.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Dec 2015 @ 12:18pm

    My takeaway is this...

    Over the past twelve months, however, after discussing the issue with a bunch of lawyers (on both sides of the issue), I've changed my mind

    Out of the whole article, this is what struck me the most. You actually changed your mind after considering the facts and opinions of others. This is rare today.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Dec 2015 @ 1:07pm

    The problem is that the appeals court has went in the wrong direction. While it's true that free speech is a protected constitutional right, to trademark free speech is just wrong and that's exactly what "The Slants" are attempting to do, trademark an ethnic slur.

    The USPTO strips Washington Redskins of their trademark. Fine, while I may not agree with their decision, I do agree that it could be seen as offensive. The Slants tried to do the same thing and the appeals court says they are allowed to?

    WTF?

    The federal courts are encouraging the copyright and trademarks of ethnic slurs. I hate to say it here, but because of the decision by the appeals court, then I'm allowed to go out and trademark the word "nigger". I hate to say it, but that's just wrong.

    However, in this day and age, you can't do anything without offending someone because everyone is so damn sensitive these days, it's like every person in this country has developed PMS, all of a sudden.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Dec 2015 @ 6:34pm

    My problem with this whole issue is that the NFL should be able to simply bar the Washington team from having a culturally offensive name. It shouldn't be a matter for trademark law because the league should have dealt with it.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Dec 2015 @ 10:42pm

    The ideal solution would be for the Washington NFL team to find themselves with no sponsors, empty grandstands, and a severe disadvantage in player recruitment until they changed their name.

    Unfortunately, for that to happen, the majority of the NFL-watching populace would have to be closely engaged in politics, ethics and racial justice. And that ain't never gonna happen.

    reply to this | link to this | view in chronology ]

  • identicon
    Yes, I know I'm commenting anonymously, 23 Dec 2015 @ 10:02am

    Unconstitutionally vague

    quote:
    There is also a concurring opinion that says that beyond the fact that Section 2(a) is a violation of the First Amendment it's also a violation of the Fifth Amendment for being "unconstitutionally vague," specifically arguing that the term "may disparage" leaves things wide open in a way that is unconstitutional.

    Does this mean that there is a chance to get TPP declared "unconstitutionally vague" or am I missing something?

    reply to this | link to this | view in chronology ]


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