From my title, you may think I am referring to the battle over the REDSKINS trademark. However, the In re Tam case beat the REDSKINS team to the high court. The case involving the REDSKINS mark is currently on hold until the United States Supreme Court decides the In re Tam case. These cases have been the topic of prior blog posts. For example, https://www.duetsblog.com/2016/10/articles/articles/supreme-court-benches-dan-snyders-team/ and https://www.duetsblog.com/2016/07/articles/trademarks/no-budding-in-line-washington-redskins/ and https://www.duetsblog.com/2015/12/articles/trademarks/will-uspto-director-michelle-lees-signature-adorn-a-slants-certificate-of-registration/
The Supreme Court heard argument regarding the In re Tam case last month regarding whether the United States Patent and Trademark Office (USPTO) could refuse to register THE SLANTS as a trademark.
The Government explained that the Lanham Act prohibits the registration of any mark that may disparage persons, institutions, beliefs or national symbols. A denial of registration does not limit the ability to use the mark in commerce or otherwise to engage in expression or debate topics. According to the Government, the Lanham Act’s disparagement provision places a reasonable limit on access to a government program rather than a restriction on free speech that would violate the First Amendment.
The Supreme Court Justices actively questioned both the Government’s attorney and Mr. Tam’s attorney. Justice Kennedy raised the issue of copyright protection and that refusing to copyright protect disparaging work would pose a significant First Amendment issue. However, there are limits such as not being able to copyright new words or short phrases. Justice Ginsburg, however, distinguished the copyright act because you cannot sue for copyright infringement unless registered. There is no such restriction on trademark infringement.
Justice Breyer explained that the ultimate purpose of a trademark is to identify the source of the product so it is making a statement. The disparagement provision of the Lanham Act says you can say something nice but not bad about a minority group.
The Government argued that trademarks tell the public from whom the goods or services emanate, but this is not expressive in its own right. Trademarks have a dual purpose of identifying source and as a miniature advertisement. Congress should be able to discourage negative advertising by not registering a trademark such as “Coke Stinks.”
Justice Kagan explained that Government programs cannot make distinctions based on viewpoint. She then asked the Government’s attorney isn’t that what the Lanham Act’s non-disparagement provision is doing? The Government pointed out the restriction was only for the government program of registration. The Government argued that the restriction on disparagement was reasonable because the Government is publishing the mark. Mr. Tam could still use THE SLANTS trademark in commerce and have common law rights in the trademark.
Justice Kagan raised the issue of whether a trademark registration was Government speech itself. The Government publishes the registration on its Web site and sends the trademark registrations to other countries.
Mr. Tam’s attorney disagreed with the Government arguing that the Lanham Act’s provision prohibiting disparagement (and scandalous marks) was unconstitutional under the First Amendment. Tam’s attorney argued that trademarks constitute both commercial (e.g. the band’s name) and non-commercial (e.g., Proud Asians) speech.
Justice Sotomayor asked Mr. Tam’s attorney isn’t it true that he was asking the Government to endorse his trademark or name in a way that it chooses not to? The speech is not being burdened, because the mark can still be used and he can still sue others. Other laws restrict commercial speech such as product disparagement. Libel and slander laws also restrict speech. Further, there are restrictions on speech carried over airwaves.
Tam’s attorney conceded that other content distinctions in the Lanham Act such as prohibition against registering marks that are falsely suggestive of a connection that is likely to cause confusion, descriptive, mis-descriptive, functional, a geographical indication of wine or spirits, etc. would survive his First Amendment challenge. Justice Kagan explained that this then meant that the registration of trademarks was not the same as restricting speech in a public park where free speech could not be so restricted.
In rebuttal, the Government argued that its registration program provides certain benefits that the Government does not have to provide. Denial of registration only affects the commercial aspect of the trademark by limiting remedies for infringement. The program does not regulate the non-commercial component, namely use of the trademark.
Trying to read the tea leaves, I am thinking the Supreme Court may liken this speech (e.g., trademark registration) at issue to the speech of Texas license plates at issue in the case (Walker v. Texas Div., Sons of Confederate Veterans, Inc., No. 14-144, 2015 WL 2473375 (U.S. June 18, 2015)) mentioned by Judge Ginsburg during oral argument. If the Court decides to do so, this could result in a ruling that the Government can place a reasonable restriction on its program. An owner can use the disparaging trademarks and sue infringers even without registration with the Government.
How do you think this will come out?