It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).

If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued “in the name of the United States of America” — won’t be some uninteresting and ignored “nuance” of trademark law to the justices.

Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being.

Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United States Patent and Trademark Office announced it will continue to hold on to and suspend trademark applications containing scandalous or immoral matter, until further notice.

The Trademark Office is waiting to see whether the federal government will appeal the Brunetti decision to the U.S. Supreme Court. What I would give to be a fly on the wall in those discussions.

As you may recall, a three-member panel of the Court of Appeals for the Federal Circuit (CAFC), ruled last December that the “scandalous or immoral” statutory bar to registration violates a trademark applicant’s Free Speech, overturning a part of trademark law in existence since 1905.

Since the federal government’s request that the entire CAFC reconsider the three-member panel decision Brunetti was denied in April, the government now has until July 11 to seek Supreme Court review or ask for more time to decide, stay tuned. Learned John Welch predicts no appeal.

During our INTA panel discussion, I predicted the government will seek review of Brunetti by the U.S. Supreme Court. I also predicted the Supreme Court will pass on the request, stay tuned.

Even if it might be tempting to believe that — in our present culture — anything goes and nothing can rise to the level of scandalousness any longer, so why bother trying to salvage a statutory relic from more than 100 years ago, I’m thinking the federal government won’t throw in the towel yet.

As we’ve written before, the Brunetti decision, didn’t anchor itself to the viewpoint discriminatory requirement from the Supreme Court in Tam, instead focusing on mere content discrimination to justify invalidation of a more than a century old part of federal trademark law.

This much easier test for invalidation puts at risk many other portions of federal trademark law, so I’m thinking the federal government can’t let the mere content discriminatory requirement of Brunetti stand without at least trying for Supreme Court review for further direction and guidance.

It’s also hard to believe the federal government is truly ready to have the USPTO knowingly begin to federally register obscene, profane, and sexually explicit matter as trademarks, “in the name of the United States of America,” for the first time in history. What’s your prediction?

UPDATE: Susan Decker of Bloomberg interviewed and shares quotes yours truly on the subject, here.

Of course, loyal readers have been eagerly awaiting Part III of the series (see Part I and Part II) focusing on Tam’s intersection of federal trademark registration and the First Amendment.

In terms of the certain and practical implications flowing from the decision, it opens the door to a host of new trademark applications containing religious and racial slurs, including the N-word.

Perhaps this explains, in part, why the Justice Department flipflopped on the issue and now says that the “scandalous and immoral” provision of Section 2(a) actually can survive Matal v. Tam.

If the Federal Circuit allows the “scandalous and immoral” provision to survive Tam and attempts to craft some sort of reasoning as to why it should be treated differently than disparagement, we’ve already pointed to how that may impact pending and suspended refusals of the R-Word.

On the other hand, if the Federal Circuit eliminates “scandalous and immoral” registration refusals relying on the Supreme Court’s Tam decision, as consistency of analysis would seem to require, how many of the newly filed scandalous marks actually will be published in the Official Gazette?

Another interesting question might be whether any of these obviously offensive applications will satisfy the essential predicates to registration, and actually adorn the Principal Register, with official Certificates of Registration issued in the name of the United States of America?

It’s worth asking whether the Supreme Court’s destruction of the even-handed framework that the USPTO devised in applying the disparagement provision of Section 2(a) (conscious of favoring neither side on an issue and determined to ignore an Applicant’s intent), inevitably will lead to selectively enforced analyses above the table driven by emotions residing beneath the table.

One area for concern might be the Trademark Office’s growing interest in refusing registration of matter deemed merely informational; presumed “incapable” of performing a trademark function. I’m left wondering, how tempting might it be to use this rather blunt tool on seriously offensive subject matter after Section 2(a) has been stripped of its previous reach in denying registration?

Having said that, will or should the Trademark Office reassess Exam Guide 2-17, concerning Merely Informational Matter, in light of the Tam Court’s perspective on viewpoint discrimination. Seems like it should to me. So, I’m also left wondering, exactly how might “merely informational matter” not express a viewpoint, making such a refusal presumptively invalid?

Since the federal government is apparently powerless to prevent the registration of disparaging trademarks because doing so constitutes viewpoint discrimination that cannot withstand strict scrutiny, what is the fate of federal dilution law, especially the provisions against tarnishment of famous marks? Wes noted some serious questions, others have too, here, here, and here.

In particular, Justice Alito labeled the disparagement registration ban as a “happy-talk clause,” adding that “[g]iving offense is a viewpoint,” and Justice Kennedy reinforced that viewpoint, saying: “To prohibit all sides from criticizing their opponents makes a law more viewpoint based, not less so.” Given that clarity, does this defecating dog trademark not express a viewpoint too?

The Applicant defended Greyhound’s opposition, in part, by arguing that “reasonable people would not be offended because the mark mocks the craze for shirts bearing prestigious emblems.” Doesn’t that sound a lot like a viewpoint being expressed with the defecating dog trademark?

Yet, in rejecting the Applicant’s arguments, and in granting Greyhound summary judgment and refusing registration of the defecating dog mark, the TTAB concluded, back in 1988:

“We do not find applicant’s arguments to be persuasive. Even assuming that people are not offended by the sight of a dog defecating on the ground, applicant’s mark, used on its goods, is a dog defecating on a shirt. This certainly produces a different effect from the viewing of a dog defecating in its normal environment.”

“Further, applicant admits that some people would find the depiction of feces in the mark offensive and that people ‘expect to find something a little out of the ordinary when they see this type of applique.’ In effect, applicant is admitting that the mark has a shock value, and we view the shock to be the offensiveness of the depiction.” (citation omitted)

Does this not constitute “giving offense” and isn’t it fair to say, it “expresses ideas that offend” — to use Justice Alito’s words? Do shocking images and content not convey a viewpoint?

Justice Kennedy stated the disparagement provision “reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.”

He went on to say:

“Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context.”

If so, and if the “scandalous and immoral” provision of Section 2(a) does not survive Constitutional scrutiny in Brunetti, then how does Greyhound, or any other owner of a famous brand, prevent registration (and use) of trademarks designed to express a negative viewpoint about a famous brand while also serving as a trademark for Applicant’s own goods and/or services?

And, what about the below RED SOX/SEX ROD example? The TTAB ruled that the stylized SEX ROD mark “would be viewed as a sexually vulgar version of the club’s symbol and as making an offensive comment on or about the club.” That sounds like viewpoint discrimination too. So, on what basis can the Boston Red Sox object with the disparagement provision gone, and if dilution by tarnishment is also considered unconstitutional viewpoint discrimination?

Can dilution tarnishment survive the Tam Court’s strict scrutiny against viewpoint discrimination?

Daniel Snyder, NFL owners, FEDEX, and other NFL sponsors, take note, breaking news from courageous Neal M. Brown, Ed.D., Head of School, Green Acres School in Bethesda, Maryland, about twenty miles from FEDEX Field:

“[T]he term ‘Redskin’ is a racial slur. Its use, whether intentional or not, can be deeply insulting and offensive. It is a term that demeans a group of people. Similarly, the team’s logo also can reasonably be viewed as racially demeaning. At best, the image is an ethnic stereotype that promotes cultural misunderstanding; at worst, it is intensely derogatory.”

“As such, having students or staff members on campus wearing clothing with this name and/or this team logo feels profoundly at odds with our community’s mission and values. We pledge in our Diversity Statement to foster both ‘an inclusive and uplifting community’ and ‘a sense of belonging for everyone in the Green Acres community.’ Similarly, our Statement of Inclusion calls upon us to ‘welcome people of any race, national, or ancestral origin,’ among other social identifiers. Further, as our guidelines for ‘appropriate dress’ in the Community Handbook require students to ‘dress in ways that demonstrate respect for others,’ we cannot continue to allow children or staff members—however well intentioned—to wear clothing that disparages a race of people.”

“I ask that you please not send your children to school wearing clothing with either the team name or logo in the year and years to come. I will be speaking with students to share with them my decision and to enlist their understanding and support. Additionally, we invite you to reach out to us with any questions you may have about how to discuss this with your child.”

Again, not so fast, Mr. Snyder, the R-Word is looking awfully scandalous these days, and this issue isn’t going away . . . .

See coverage from USA Today, Washington Post, Washington Times, and Sports Illustrated.

UPDATE from Time: The NFL Needs to Stop Promoting a Racial Slur

We can be certain of one thing for sure, the Supreme Court’s decision today, striking down the disparagement clause of Section 2(a) of the Lanham Act will be analyzed for some time.

The Court called the provision of the Lanham Act barring the federal registration of trademarks that consist of or comprise matter that may disparage persons, a “happy-talk clause,” concluding it violates the First Amendment.

The debate over the implications of the Tam decision has commenced, so stay tuned.

Those of you who know me well can appreciate, this is a tough pill to swallow, we’ll have to see what good can come from it.

And, the answer to a question I raised back in 2015 apparently will be answered “no,” but not for reasons I had hoped.

Ron, I had envisioned writing a very different post about the Supreme Court’s long-anticipated decision in Tam, you, your team, and Mr. Tam have made history.

By the way, anyone know who coined the phrase Happy-Talk Clause, I must have missed that in the briefing?

Throughout the past decade, attorneys, judges, plaintiffs, and defendants have invested thousands of hours in the fight over offensive trademarks. Most of the public is aware of the controversy surrounding the Washington Redskins, who continue to be embroiled in litigation that is currently pending with the Federal Court of Appeals for the Fourth Circuit. But even more important is the pending litigation at the Supreme Court, where the Asian-American band The Slants have challenged the constitutionality of the law that prevents the federal government from granting the benefits of federal registration to trademarks that disparage groups of people.

We’ve discussed the history and merits of the case at at length. I won’t get into the details in this post. However, with the Cleveland Indians in town to play the Minnesota Twins, I was reminded that the Cleveland organization seemed to be escaping the glare of the media attention that had been focused on the Redskins and the Slants. Apart from the name of the team itself, Cleveland’s logos throughout only seem to worsen the potential to disparage or offend Native Americans. For reference, the logos and years of use are reproduced below:

Indians Logos

The Supreme Court heard oral arguments in the Slants case (In re Tam) on January 18th. But while we await a decision from the Court, the Cleveland Indians provide us with a reminder that, regardless of what a court may say, the court of public opinion may have the final word. In fact, we have learned over the last two weeks that Major League Baseball’s Commissioner Rob Manfred has been in discussions with the Cleveland organization regarding the “Chief Wahoo” logo since the end of the World Series. The Commissioner has publicly stated that he is pushing the team “to transition away” from the logo. Just last January, the MLB awarded Cleveland the right to host the 2019 All-Star game. With recent events in Charlotte and throughout the U.S., it’s hard not to wonder whether Chief Wahoo’s retirement date may already be set.

We’ll have to wait and see how the Supreme Court rules in In re Tam but, as with the case of the Cleveland Indians, not all trademark battles are won in the court of law.

 

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It’s not every year that participants in the William E. McGee National Civil Rights Moot Court Competition need to understand the various nuances of federal trademark law.

Yet, with the Lee v. Tam case pending before the U.S. Supreme Court, and Section 2(a) of the Lanham Act hanging in the balance, this was such a year for more than fifty competitors.

The weekend before last, yours truly had the distinct privilege of judging the final oral arguments in the McGee competition at the Mitchell Hamline School of Law in St. Paul, Minnesota. It was ever so humbling to be part of a very distinguished panel of would-be U.S. Supreme Court Justices, hearing the oral arguments and probing the Constitutional issues in the Tam case.

The very distinguished portion of the panel included: The Honorable Peter M. Reyes, Jr. of the Minnesota Court of Appeals, retired Minnesota Supreme Court Justice Esther Tomljanovich, Sharon Sandeen, Director of Mitchell Hamline School of Law’s Intellectual Property Institute, and Robert J. Gilbertson of the Greene Espel law firm.

The winning first place team hailed from Howard University (shown above), located in Washington, D.C., arguing in favor of the government’s position to uphold the Constitutionality of Section2(a). The second place finalist team came from the Illinois Institute of Technology’s Chicago-Kent College of Law, arguing in favor of Simon Tam’s challenge to strike down the disparagement clause of Section 2(a) on First Amendment and Void for Vagueness grounds.

The would-be Supreme Court Justices were not judging the merits of the case, instead we judged the teams based on the quality and organization of their oral arguments.

It was inspiring to witness such strong intellect, confidence, poise, grace, and decorum, from each of the finalists — there is no doubt in my mind, they will all make fine lawyers, and they should all be very proud of their performances and high achievement.

Learning after the event that only three of the four finalists had taken an intellectual property course before, made their mastery of the issues even more impressive, hearty congratulations!

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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?

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?

Last week the U.S. Supreme Court agreed to hear Mr. Simon Tam’s arguments and review the Court of Appeals for the Federal Circuit’s majority decision striking as unconstitutional Lanham Act Section 2(a)’s bar against the federal registration of disparaging matter, so it will decide the following issue, once and for all:

“Whether the disparagement provision 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 you may recall, Tiffany previously wrote how Dan Snyder’s Washington D.C. NFL franchise asked to have its district court loss and appeal jump over the 4th Circuit Court of Appeals to go directly to the Supreme Court, if the Court were to decide to hear the Tam case.

As much stock as the team has put in the constitutional challenge to defend its several R-Word registrations, found offensive and disparaging to Native Americans, I suspect Mr. Snyder and his lawyers don’t relish the idea of sitting on the sidelines while Mr. Tam’s counsel argues the constitutional issue to the Court.

Earlier today the Supreme Court denied the team’s request, so Snyder’s team of lawyers will have to sit out for that important oral argument, although I suspect they’ll be one of many to submit a written amicus brief, as a “friend of the court.”

Why doesn’t Dan Snyder instead focus on being another kind of friend and get on the right side of history? And, doesn’t Mr. Snyder’s refusal to ever consider a name change, even after losing the registrations, actually undermine his Free Speech challenge?

As you know, my view is that Section 2(a) of the Lanham Act should be upheld as constitutional:

Stay tuned for more and let’s hope that Georgetown Law School Professor Rebecca Tushnet’s insights on the constitutionality of Section 2(a) carry the day at the Court.