IP Law Daily Justices wrestle with whether disparaging trademark may be denied registration
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Wednesday, January 18, 2017

Justices wrestle with whether disparaging trademark may be denied registration

By Cheryl Beise, J.D.

The U.S. Supreme Court today heard oral arguments regarding whether the Lanham Act’s prohibition against the registration of "disparaging" trademarks violates the Free Speech Clause of the First Amendment. Section 2(a) of the Lanham Act denies registration to marks that "may disparage" individuals, institutions, beliefs or national symbols. The Justices wrestled with whether the disparagement restriction constitutes unconstitutional censorship or viewpoint-based discrimination or a valid limitation on access to a federally-funded government program.

Malcolm L. Stewart, Deputy Solicitor General, U.S. Department of Justice, presented arguments on behalf of the U.S. government and USPTO Director Michelle K. Lee. John C. Connell, of Archer & Greiner, P.C., argued on behalf of Simon Shiao Tam, who had applied to register the mark THE SLANTS as the name of his Asian-American rock band. The USPTO refused to register Tam’s mark on the ground that the mark would be disparaging to Americans of Asian descent. On December 22, 2015, in a 9-3 decision, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, reversed the refusal to register. Applying strict scrutiny, the Federal Circuit concluded that the disparagement proscription of Section 2(a) is facially unconstitutional because the government cannot refuse to register a mark merely because it disapproves of the expressive message it conveys or because it finds that the mark would be disparaging to others.

Government program. Emphasizing the "government program" aspect of the registration regime, Malcom Stewart began by arguing that Section 2(a)'s disparagement provision is constitutional because it "places a reasonable limit on access to a government program rather than a restriction on speech."

Justices Kennedy and Alito pressed Stewart on the differences between the registration regimes for trademarks and copyrights—which cannot be denied registration based on objectionable content. Chief Justice Roberts observed that Stewart’s government program argument appeared to be circular.

In response to a question by Justice Breyer asking what purpose related to trademark protection was furthered by the disparagement provision, Stewart said that registration of disparaging trademarks would hinder commercial development because trademarks are intended to serve as source identifiers and not as expressive in their own right. Stewart described disparaging marks as "a distraction" from the source identification function.

Justices Ginsburg and Kagan pressed Stewart on whether complimentary terms could be registered whereas negative terms could not. Stewart floundered in answering the question, first speculating that that a term like "Slants Are Superior" could not be registered, but a term like "the flag is wonderful" could be registered. The Justices were concerned that registration of positive terms, but not negative terms raised First Amendment issues.

Stewart additionally argued that the disparagement provision did not amount to viewpoint discrimination because it "sweeps with a broad brush." "But that's like saying it does so much viewpoint-based discrimination that it becomes all right," Justice Kagan remarked. Even government programs cannot distinguish based on the viewpoint of a speaker, she added.

Justice Ginsburg also suggested that there was "a large concern with vagueness," in view of apparent inconsistencies in the way the USPTO has applied the disparagement refusal. Stewart pointed out that some potential inconsistency is not surprising, given that the USPTO receives 300,000 trademark applications every year.

However, as Justice Sotomayor observed, "Isn't it another way to say it's not clear enough for them to get it right?"

Trademarks as source-identifiers. John Connell argued that the disparagement clause of Section 2(a) is unconstitutional because it targets noncommercial speech and denies registration to marks that only express negative views. Connell also asserted that "the government is trying to do here is simply encourage commercial actors to conduct business in such a way as to not insult customers."

Justice Sotomayor pointed out that Tam was not prevented from using the name THE SLANTS, or from enforcing common law rights in the mark, but only from obtaining federal registration. She wanted to know why this was such a burden. Connell suggested that denial of registration removes competitive benefits.

Justice Breyer compared registration to restricting speech on one of many bulletin boards in a train station. Later, he and Justice Ginsburg likened registration to time, place, and manner restrictions.

Justice Kagan also suggested that the government publication of registered trademark was a form of government speech over which the government has some interest in disassociating itself from racial or ethnic slurs. She noted the case upholding the state of Texas’s ability to deny registration of license plates displaying the Confederate flag.

Connell first suggested that all marks meeting the commercial source-identification test should be registered. To that Sotomayor asked, whether the trademark "Trump is a thief," even if adjudicated in court to be libel or a slander, would still be a valid trademark.

When Cornell answered in the affirmative, Justice Sotomayor responded, "That makes no sense."

To Chief Justice Roberts, the expressive and noncommercial aspects of a trademark seemed "an awfully blurry line." Justice Alito agreed, pointing to Nike’s "Just Do It" mark as an example of both. Connell conceded that in the Nike example, as in THE SLANTS, the expressive message and the source function were "inextricably intertwined."

"I don't understand how we can separate them and apply to the expressive part a more rigorous test than we would apply to the commercial part," Justice Alito said. "I really have difficulty separating the expressive from the commercial aspect of a trademark," he added.

It’s impossible to tell how the Court will resolve this "difficulty," but the ultimate fate of Section 2(a)’s prohibition on registration of disparaging marks, as well as the prohibition on registering marks deemed offensive and scandalous, could depend on it.

The case is Docket No. 15-1293.

Attorneys: Malcolm L. Stewart, Deputy Solicitor General, U.S. Department of Justice, for Michelle K. Lee, Director, USPTO. John C. Connell (Archer & Greiner, P.C.) for Simon Shiao Tam.

MainStory: TopStory Trademark USPTO

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