Let’s hope not, for a variety of reasons.
In other words, let’s hope the Supreme Court straightens out the unfortunate ruling last week that the federal government is powerless to deny requests to federally register marks on grounds that they consist of or comprise racial slurs or other matter that may disparage persons.
The CAFC previously agreed with the USPTO and TTAB that THE SLANTS mark for “entertainment in the nature of live performances by a musical band,” may disparage persons of Asian descent, in violation of Section 2(a) of the Lanham Act, so it affirmed the registration refusal. Then this.
The decision stirring up the most recent discussion is the en banc majority decision from the CAFC that now purports to invalidate the nearly 70-year old disparagement portion of Section 2(a), as a violation of Applicant Tam’s right to Free Speech.
As dissenting Circuit Judge Lourie noted in amazement:
“[O]ne wonders why a statute that dates back nearly seventy years — one that has been continuously applied — is suddenly unconstitutional as violating the First Amendment. Is there no such thing as settled law, normally referred to as stare decisis? Since the inception of the federal trademark registration program in 1905, the federal government has declined to issue registrations of disparaging marks. The Trademark Act of 1905 provided specific authority to refuse to register immoral or scandalous marks; the USPTO refused to register disparaging marks on those grounds before the Lanham Act of 1946 was enacted, which explicitly incorporated a disparagement proscription. The USPTO’s authority to refuse to issue trademark registrations with certain offensive content has thus existed in U.S. law for over one hundred years.” (citations omitted)
The majority decision explicitly reinstated the previous “holding that Mr. Tam’s mark is disparaging,” but it went on to declare the disparagement portion of Section 2(a) unconstitutional, and then believing the federal government powerless to deny registration on disparagement grounds, it appeared to lament or at least “recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities.”
I’m believing that Congress has the power to direct the USPTO to withhold registration and the issuance of a Certificate of Registration if the subject matter consists of or comprises matter that may disparage persons or bring them into contempt or disrepute.
After all (and in addition to the valid points raised by dissenting Circuit Judge Lourie about publication in the Official Gazette), Section 7 of the Lanham Act explicitly confirms that a Certificate of Registration is issued in the “name of the United States of America” and has the federal government’s fingerprints all over it:
“Certificates of registration of marks registered upon the principal register shall be issued in the name of the United States of America, under the seal of the United States Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon, and a record thereof shall be kept in the United States Patent and Trademark Office.” (emphasis added)
As I’ve cautioned before, conflating the federal government’s act of approving registration and issuing a Certificate of Registration with the Applicant’s underlying trademark is an improper analysis of the First Amendment question:
“There is no question that a trademark communicates information about an underlying brand, but the Certificate of Registration communicates something quite different — the piece of heavy stock paper with the words in fancy script “United States of America” and “United States Patent and Trademark Office,” across the top, and the golden Official Seal of the USPTO (including a reference to the Department of Commerce) located in the lower left hand corner of the Certificate of Registration, also appearing above the signature of the Director of the USPTO (who is also Under Secretary of Commerce for Intellectual Property), an employee of the federal government and principal advisor to the President of the United States — what this valuable piece of paper communicates is an official act of the federal government that it has examined and approved the trademark for federal registration and exclusive protection in United States commerce.”
Dissenting Circuit Judge Lourie said it even better this way:
“[F]ederally registered trademarks can be identified with two message contexts: one from the provider of goods or services, who has chosen to use a certain mark to link its product or services to itself, and one from the government, which has deemed the mark qualified for the federal registration program. The evaluation of disparagement is not based on the government’s moral judgment, despite any distaste expressed in its briefing for cancelled or applied-for marks; a mark is disqualified based only on evidence of its perception by the affected persons. The government action does not include a judgment on the worthiness or the effectiveness of the mark; if it did, it might — but not necessarily — venture into viewpoint-discrimination territory. And while a trademark alone, as a word placed on private property, is not government speech, once it claims that federally registered status, it becomes more than the private owner’s speech. It is not simply private speech as is the holding of a placard in a parade.”
There is so much more to say, but just to make sure the context of the Tam case is crystal clear in the meantime, exactly whose signature would appear on THE SLANTS Certificate of Registration, if the majority of the CAFC viewpoint prevails?
Well, the current Director of the USPTO is a very accomplished woman named Michelle K. Lee, who happens to be “a first generation Chinese-American” (as reported by AllGov):
Last, at least for now, and more to the point about the majority’s recognition that (if their ruling is upheld) even more registrations are likely to issue for offensive marks, let’s hope that the USPTO’s power outage that commenced on December 22, the same day the CAFC issued its en banc ruling in In Re Tam, was a complete coincidence and not triggered by a flood of trademark filings for other racial slurs.