By: Bridgetower Media Newswires//July 18, 2017//
By: Bridgetower Media Newswires//July 18, 2017//
The clause was ultimately found to violate First Amendment free-speech rights. The decision is already making itself felt. The disparagement clause became a topic of much media discussion in the past few years, especially after the federal government challenged as offensive the NFL Washington franchisesâ âRedskinsâ moniker. But by June 29, 2017, in light of the Supreme Courtâs decision in Tam, the Justice Department had officially halted its efforts to strip the âRedskinsâ name of federal trademark registration.
Background facts and lower court holding
The case stems from an Asian-American dance-rock bandâs attempt to obtain federal trademark registration for the name âThe Slants.â The USPTO assessed the bandâs application and refused to register the mark under 15 U.S.C. § 1052(a), known as the disparagement clause. The clause provides that the USPTO may refuse to register a trademark on the principal register if the mark is found to âdisparageâ any âperson, living or dead.â This provision has been found to apply to ânon-juristicâ persons such as racial or ethnic groups.
Although applicants denied federal registration can still use their mark, and enjoy some benefits and protections under federal and state law, they lose major benefits that come with being listed on the Principal Registerâincluding the ability to obtain exclusives rights to use the mark in commerce, enjoy the presumption of exclusive and valid ownership in their mark, and prevent the importation of infringing goods. So although not necessary, the registration of federal trademarks is an extremely valuable asset.
The examiner who reviewed âThe Slantsâ application applied a two-part test and found (1) that the mark was associated with an identifiable group (Asians) and (2) that the markâs meaning âmay be disparaging to a substantial compositeâ of persons of Asian ethnicityâa finding based in part on the definitions of the terms âslantsâ and âslant-eyesâ. The burden then shifted to the band to show that the mark was not disparaging. The bandâs lead singer, Simon Tam, tried to accomplish this by disclosing that he chose the mark not to offend Asian-Americans, but to repurpose an ethnic slur and rebrand it with a good meaning.
Tam lost this fight, unsuccessfully went through the Trademark Trial and Appeal Board appeals process, and eventually appealed to the Court of Appeals for the Federal Circuit. Sitting en banc, the Federal Circuit sided with Tam and his bandmates, finding that the disparagement clause was facially unconstitutional because it amounted to âview-point discriminationâ that did not pass strict scrutiny; that is, the clause was not narrowly tailored to serve an important government interest.
The Supreme Courtâs view
The government petitioned the Federal Circuitâs decision to the Supreme Court, which granted certiorari to answer a single question asking whether the disparagement clause in the Lanham Act âis facially invalid under the Free Speech Clause of the First Amendment.â
The court, in an 8-0 decision attributed to Justice Samuel Alito (joined in part by Chief Justice Roberts and Justices Thomas and Breyer), agreed with the federal circuit and held that the Lanham Actâs disparagement clause is facially unconstitutional because it violates the First Amendment. Alito reaffirmed the courtâs longstanding position that the First Amendment protects even offensive viewpoints. He elaborated that:
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 âthe thought that we hate.â
The court, in so holding, shot down all arguments the government raised to defend the disparagement clause. Specifically, the court ruled against the governmentâs claims that trademarks are (1) âgovernment speechâ exempt from First Amendment scrutiny; (2) a government âsubsidyâ subject to government control; and (3) âcommercial speechâ subject to a lesser standard of review.
The court included several noteworthy quotes in denying each of these arguments. In striking down the âgovernment speechâ theory, Alito recognized that if trademarks were considered government expression the federal government would be âbabbling prodigiously and incoherently.â He illustrated his point by asking, âif trademarks represent government speech, what does the Government have in mind when it advises Americans to . . . âJust do itâ or âHave it your way?ââ as Nike and Burger King suggest consumers do.
Justice Alitoâs point is that just because the government issues trademark registrations, that does not mean it endorses the markâs meaning or expression. It, therefore, has no real right to monitor a trademarkâs general meaning, even if it offends the masses.
Alito also denied the governmentâs justifications for the clause. The government and its amici defended the USPTOâs ability to refuse registration for certain marks by highlighting the disparagement clauseâs important purposes, including preventing underrepresented groups from being âbombarded with demeaning messages in commercial advertisingâ and protecting the flow of commerce from racist, sexist, or other discriminatory marks.
The court, though, dressed down these justifications and found they amounted to nothing more than the governmentâs belief that it has an unrestricted âinterest in preventing speech expressing ideas that offend.â But Alito recognized that this belief contradicts longstanding First Amendment jurisprudence that âspeech may not be banned on the ground that it expresses ideas that offend.â Viewpoints may be offensive, but the First Amendment protects the right to express offensive ideas, even in trademark form.
The courtâs decision, again, has already had big ramifications, most noticeable in the governmentâs decision to throw in the towel on its challenge to the Washington Redskinâs trademark. Surely other pending litigation dealing with this issue will come to a close sooner than expected and the USPTO will likely see an increase in applications for -and registrations issued to – more colorful, offensive trademarks.