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)
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:
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
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
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
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
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.