The Lanham Act’s Disparagement Clause is in Trouble

By Jason M. Russell (Rutgers Law Student)

Simon Tam, an Asian-American musician, author, speaker, and political activist, applied to the federal government to register the phrase “THE SLANTS” as a trademark to identify and distinguish his rock band. According to Mr. Tam, he chose this phrase to reclaim a racial stereotype, hoping that his use would minimize its pejorative connotation. But the U.S. Patent and Trademark Office (USPTO) rejected his application, citing Section 2(a) of the Lanham Act, which states that a mark consisting of disparaging matter shall be refused registration. The U.S. Court of Appeals for the Federal Circuit reviewed his appeal en banc and determined that the USPTO impermissibly infringed upon Tam’s right to free speech, and the government subsequently appealed.

The pending case of Lee v. Tam, which was recently heard by the eight Justices of the U.S. Supreme Court on January 18, 2017, raises the question of whether the Lanham Act’s disparagement clause violates the First Amendment. Much of the argument focused on whether a federally registered trademark—defined by Congress as “any word, name or symbol” used by a person to “identify and distinguish his or her goods” and to “indicate the source of the goods”—is capable of representing the expression of an idea worthy of protection from government intrusion.

The fundamental issue at the heart of the case is whether a federally registered trademark is merely a commercial statement designed only to increase the profit of its owner, or is a trademark also capable of something more—a communicative expression intended by its owner to make a noncommercial statement about him or herself and to contribute to the marketplace of ideas.

After listening to the parties’ oral arguments before the Court, it is clear that the government’s restriction on disparaging marks is in serious trouble. The main thrust of the government’s argument is that a trademark is purely commercial speech without an expressive element; and, since the federal trademark registry is akin to a government program, similar to the allocation of subsidies or the distribution of grant monies, the prohibition against disparaging marks is merely a reasonable limit on an applicant’s access to a government benefit rather than a wholesale restriction on private speech.

Right from the start, a number of the Justices were skeptical of the premise of this argument. Justice Kennedy noted that we now live in “a culture in which we have tee shirts and logos and rock bands” that are used in the marketplace to express the owner’s point of view. Justice Breyer went even further, pointedly asking the government what the purpose of the disparagement provision is. Counsel responded that the prohibition protects the free flow of commerce, since disparaging marks can distract the purchasing public from the underlying purpose of the trademark: to identify the source of the particular product, and to distinguish it from its competition. This articulation of the government’s interest, which completely overlooks any expressive, noncommercial element within a trademark, did not seem to satisfy any of the Justices’ free speech concerns.

In addition, Justice Kagan, after conceding that the federal trademark registry could be considered a government program, noted that it is still impermissible for the government to make viewpoint-based distinctions based on what the USPTO examiner finds objectionable. When she asked counsel to explain how Section 2(a) is different from a “fairly classic case of viewpoint discrimination,” he responded that the statute broadly prevents disparagement of all groups, rather than providing protection to certain groups but not others. This exchange underscores a fatal flaw in Section 2(a): even though on its face the statute seems to cast a wide net and provide protection from offense to everyone, in reality it gives the USPTO examiner almost unlimited discretion to review the expressive element of the mark and determine whether a substantial composite of the community will find it offensive. This violates two bedrock principles of the Court’s First Amendment jurisprudence: 1) that the “government may not prohibit the expression of an idea simply because society finds the idea itself disagreeable”; and 2) that the government’s discretion should be limited out of a fear of arbitrary action. At the end of the day, do we really want a government bureaucrat deciding for us what may be offensive?

The government assured the Court in its brief that it is capable of drawing an objective line in the sand as to what is disparaging, and that it can apply this principle in an evenhanded and judicious manner. Many commentators doubt that this is possible. The federal trademark registry is replete with examples of other marks that received clearance, but are arguably more offensive than THE SLANTS, which indicates that the disparaging clause is not enforced in a predictable manner. Regardless, even if the USPTO were capable of objectively enforcing the statute, the question still remains as to whether it is appropriate for the government (and the courts) to act as arbiter for what constitutes an offensive mark.

Notably, both Chief Justice Roberts and Justice Alito signaled deep-seated concerns about the ability of courts to parse out the commercial, non-expressive content of a trademark from the noncommercial, expressive content. Given the Court’s hesitancy in undertaking subjective line-drawing exercises as to what is or is not expressive speech within a trademark, the Court will likely hold that these types of inquiries are best left to the public marketplace of ideas rather than the government or the courts.

If Section 2(a) is struck down, the government argues that the USPTO will be flooded with an overwhelming number of applications for trademarks that contain hurtful or offensive content—the primary fear is that without the ability to reject these disparaging marks, the government will be essentially stamping offensive speech with its imprimatur by registering them. This concern, however, is unwarranted, as those trademarks will be judged by the market—a far more efficient actor than the government. At the end of the day, it is not a very wise business plan for an owner to have his goods or services associated with a controversial or offensive mark.

Interestingly, only four months before hearing Lee v. Tam, the Court declined to hear the Washington Redskins’ appeal of a lower court ruling that canceled the team’s logo and mark under Section 2(a). Given the identical legal questions, the cases seemed tailor-made to be heard together, but the Court chose to hear only Mr. Tam’s challenge, while the Redskins remain in legal limbo awaiting the outcome of this case. The Court’s procedural move here was certainly no accident, and it is a strong signal that the Court will invalidate the disparagement clause. Even though the cases share the same legal question, Mr. Tam and the Washington Redskins could not be more different. His intent behind using THE SLANTS, as a member of the Asian-American community, is to reclaim a negative racial slur, while the Washington Redskins are a corporation that has made billions of dollars using a logo that a substantial composite of the American Indian community finds offensive. Certainly Mr. Tam is a much more palatable party than the Redskins, if the Court were to strike down Section 2(a) of the Lanham Act.

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