As we recently discussed here, in June, the US Supreme Court declared the disparagement clause of the Lanham Act unconstitutional as a violation of the free speech clause of the First Amendment. In general, the disparagement clause prohibited registration of trademarks that might disparage a person, groups, or institutions. Matal v. Tam, 582 U.S., 137 S.Ct. 1744 (2017).
At issue was the proposed trademark application for THE SLANTS, which is the name of a dance-rock band composed of four American musicians of Asian ancestry. The lead singer is Simon Tam. Their music has been compared to pop bands such as Depeche Mode. The term “slants” is, of course, a derogatory reference to Asians. Their application for trademark registration was denied for violating the disparagement clause.
The Slants appealed the denial and, as the case gained notoriety, they used the litigation as a marketing tool. For example, they issued a 2017 album called “The Band Who Must Not Be Named” and uploaded a short 0:57 second youtube video addressed to the Supreme Court to promote their summer 2017 tour.
What Happens Now?
After a ruling in his favor by the Supreme Court, Tam’s trademark application has been approved and published on August 9, 2017. As we discussed here, trademark registration is a multi-step process. Disparagement issues can derail an application at several points in the process, most often during the examination phase but also during the 30-day opposition period, which begins when an application is published.
Tam also terminated the long-running legal battles involving the Redskins, the Washington, DC professional football team. The fight to force the team to change its name became a hot political issue leading up to the 2016 presidential campaign. The legal battle with the NFL franchise actually dates back to the early 1990s, but it was not until 2014 that native American plaintiffs were successful in challenging the trademark registration. The Trademark and Trial Appeal Board revoked the trademark registration in Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014).
The TTAB’s decision was affirmed by US District Judge, Gerald Lee. See Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Vir. 2015). Judge Lee considered the First Amendment issues, but rejected those challenges. He drew a distinction between speaking and obtaining a federal trademark registration. In his view, trademarks and the associated private speech exist separate and apart from whether the speech/trademarks are federally registered.
Judge Lee’s decision was appealed to the Fourth Circuit. Tam now obviates the lower court ruling and makes the appeal moot.
Are Other Grounds for Denial at Risk?
In the Lanham Act itself, the disparagement clause sits alongside clauses that might now be of doubtful constitutionality. The statute reads, in pertinent part: “No trademark … shall be refused registration on the principal register on account of its nature unless it— (a) 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 … “
An interesting question now arises about whether free speech challenges can succeed if trademarks are denied on the grounds of morality or scandalousness.
Tam and Copyright Registration
There has been some debate over the years about whether copyright registration should be denied on the basis of content (obscenity, for example). In general, copyright registration is considered “content-neutral.” Tam may put an end to any effort to change that.
Can the Disparagement Clause be Fixed?
Tam involved statutory language, so, in theory, Congress could revise the statute and fix the constitutional deficiency. However, that might be difficult since five Justices took a hardline pro-free speech view in Tam. Justice Gorsuch did not participate.
In general, most agree that a trademark is a form of speech. But what kind of speech is it? Competing positions include defining trademarks as:
- Private speech
- Government speech
- Commercial speech
- Political speech
- Some combination thereof
There is also an argument about whose rights are in need of protection, those who are speaking or those who are hearing/reading the speech. And, of course, there is Judge Lee’s position that registration is not a form of speech.
In Tam, the government and some of the amici participants proffered the legal position that trademarks are a form of commercial speech. As such, under governing Supreme Court precedent, the Central Hudson standard should apply. Writing for the majority, Justice Alito did not wholly agree with that position. As he wrote: “… trademarks do not simply identify the source of a product or service but go on to say something more … The name ‘The Slants’ not only identifies the band but expresses a view about social issues.”
However, Justice Alito did not resolve that question since he felt that the disparagement clause was not valid even under the permissive Central Hudson standard of review. Under Central Hudson, a law that restricts speech must meet two requirements:
- It must serve “a substantial interest” and
- It must be “narrowly drawn.”
The government offered two arguments for the first prong. The first was that the government has a substantial interest in preventing hate speech. This proposed substantial interest was rejected with Justice Alito quoting Justice Holmes from US v. Schwimmer (1929): “… the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.'”
The second substantial interest asserted was the need to protect the orderly flow of commerce by preventing invidious discrimination. Such has been shown to have an adverse impact on commerce and, it was argued, trademarks that are hateful towards races, genders, etc., will have similar adverse impacts.
It is unclear if Justice Alito accepted this as a valid “substantial interest” since he answered this by moving to the second prong. He held that the disparagement clause of the Lanham Act was not “narrowly drawn” to accomplish the purpose of preventing invidious discrimination. Chief Justice Roberts and Justices Breyer and Thomas joined this part of Justice Alito’s opinion.
The four other Justices agreed in the result, but took a hardline approach. Justice Kennedy wrote a concurring opinion that rejected the permissive Central Hudson standard. According to Justice Kennedy, the disparagement clause was simple viewpoint discrimination to be scrutinized under the highest level of review. Under that standard of review, he thought the disparagement clause was in violation of the First Amendment. Although Justice Thomas agreed with most of Justice Alito’s opinion, he wrote separately to agree with Justice Kennedy that strict scrutiny was the proper standard.
As can be seen, given the positions taken by the various Justices, it may be difficult for Congress to rewrite the disparagement clause to cure the constitutional defect, particularly if strict scrutiny is the applicable standard.
Tam raises many trademark registration questions. Will Congress even try and fix the disparagement clause? Will such efforts succeed? Will other parts of the Lanham Act be struck down? Will we see a rash of possibly offensive trademark registrations? Does the market self-correct in the sense that consumers will reject products having disparaging marks? Does this provide benefits to or create risks for your business?
Contact Revision Legal
We here at Revision Legal are watching the answers to these questions develop in real time. As we have said before, changes in the law affect how you can and should run your business. We learn the changing law so you are free to give your business the attention it deserves. You need the professionals at Revision Legal. In addition to trademark law, Revision Legal has skilled teams of lawyers and staff that can help with trade secrets, copyrights, patents, and all types of litigation.
We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to helping your business succeed.