One of the current challenges in trademark law addressed in Seattle last week at the Amazon Corporate Conference Center, host of the 2017 McCarthy Institute and Microsoft Corporation Symposium, is an issue we have discussed quite a bit here, namely Trademark Disparagement and the First Amendment. The panel to discuss this weighty topic included the following:
- Marc Levy, Partner, Seed IP Law Group (moderator)
- Tom McCarthy, Senior Professor, USF School of Law (author of the “multi-volume pre-eminent treatise on trademark law” called McCarthy on Trademarks and Unfair Competition)
- Lorelei Ritchie, Administrative Trademark Judge, USPTO TTAB
- Ron Coleman, Partner, Archer & Greiner
- Makalika Naholowaa, Attorney, Corporate, External, & Legal Affairs, Microsoft
- Stephen Coates, Senior Counsel, Amazon
To help set the table, as you may recall, oral argument occurred last month, and the Supreme Court is expected to decide the following trademark disparagement issue in the Lee v. Tam case involving The Slants mark within the next several months:
“Whether the disparagement provision of [Section 2(a) of] the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it ‘[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute’ is facially invalid under the Free Speech Clause of the First Amendment.”
As we have written before, the Supreme Court is being asked by our friend Ron Coleman, on behalf of Simon Tam, to declare unconstitutional the disparagement prong of Section 2(a) of the Lanham Act, as a violation of Mr. Tam’s Free Speech rights under the First Amendment.
Although Ron was able to convince an eager Court of Appeals for the Federal Circuit, I continue to believe the Supreme Court will conclude otherwise and uphold Section 2(a) as a reasonable limit on access to a government program rather than a restriction on speech, because the registration denial does not limit Mr. Tam’s ability to use The Slants mark in commerce, or otherwise engage in expression or debate on any subject he wishes.
Section 2(a) is a provision that has been in force and applied by the USPTO for more than 70-years under its Constitutional authority to regulate interstate commerce. And, most agree that if the disparagement prong of Section 2(a) falls, the scandalous and immoral prongs of Section 2(a) must fall too. Professor McCarthy noted that the government has conceded this very point in another parallel case involving the F-word (the dirty one from George Carlin’s seven dirty words, not this clean F-word) in the Brunetti case involving scandalous matter. Yet, keeping scandalous and immoral matter outside the contours of the United States trademark registration program has been part of federal law even longer, going all the way back to the 1905 Act, so there is a large mountain to climb in saying the Constitution has been violated as part of the federal government’s trademark registration program for more than 100 years.
One of the problems with Tam’s argument is it goes too far and would open the door to constitutional invalidation of a multitude of other content-based restrictions that further define the contours of the federal trademark registration program. In my humble opinion, the Law Professors Amicus Curiae brief filed on November 6, 2016, by Professor Christine Haight Farley of American University Washington College of Law and Professor Rebecca Tushnet of Georgetown University Law Center, make this and other points quite well.
Indeed, during the Symposium discussion on the constitutionality of Section 2(a), moderator Marc Levy noted that Tam has taken an “aggressive position” that the federal government’s trademark registry is essentially a “public forum” where no content restrictions are allowed.
On the other side of the argument, Stephen Coates provided examples of how some disparaging matter in the marketplace has been updated over time (like the visual depiction of the Aunt Jemima brand), or has simply gone away, like the Sambos restaurant chain. As I understand it, his contention is that we don’t need the Section 2(a) disparagement provision, since we should allow the market to decide what is unacceptable or not. He advanced the argument that using disparaging matter as a trademark won’t be successful in the marketplace in the end, but he didn’t address the pink elephant in the room, namely the continued use of the R-Word by the Washington NFL football franchise in the Nation’s capital.
Makalika Naholowaa, as a Board member of the National Native American Bar Association, countered quite effectively from my perspective that it is overly optimistic to conclude governmental regulation of disparagement is unnecessary in the context of the federal registration program. As to Tam’s re-appropriation argument that his intent is to change the meaning of The Slants, Naholowaa reported that all four bar associations of color believe that re-appropriation is not a good trade, and since society is not bending toward inclusion, we do need the government’s regulation of disparagement so they unanimously favor the Supreme Court upholding the disparagement provision of Section 2(a).
Administrative Law Judge Ritchie made some compelling points on Tam’s re-appropriation argument as well. She maintained that the USPTO decides each case on the evidence of record before the Examiner and the TTAB. And, unlike the Dykes on Bikes case, where substantial evidence was made of record to show the claimed mark non-disparaging at the time of registration, the same kind of evidence was not produced by Mr. Tam to overcome the disparagement refusal. In addition, she noted the USPTO can’t be in the business of considering the race or good intentions of an applicant since trademark rights can be assigned down the road to another not having the same race or intentions.
In the end, David Franklyn, Director of the McCarthy Institute and Professor at the University of San Francisco School of Law, with a roving mic Phil Donohue-style, asked for a show of hands on how members of the audience would vote as a Supreme Court justice, and our friend Marty Schwimmer of The Trademark Blog, tweeted his assessment of the headcount to be 55/45 in favor of upholding the constitutionality of Section 2(a).
Then, Franklyn polled those on the panel as to how they would vote as Supreme Court justices in the Tam case, resulting in a 3-2 reversal of the Federal Circuit’s decision by show of hands, with one understandable abstention by TTAB Administrative Judge Ritchie.
Professor McCarthy, Marc Levy, and Makalika Naholowaa were all in favor of upholding the constitutionality of Section 2(a). Ron Coleman (not surprisingly) and Stephen Coates would affirm the CAFC’s decision in Tam.
I’m with Professor McCarthy and the majority, how would you vote, and why?