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.

Erik Brunetti is not one step closer to being able to federally-register his vulgar and scandalous FUCT trademark for clothing; his portfolio of applications remain log jammed (here and here):

So, scandalous trademark applications are still on hold at the U.S. Trademark Office, since the government is now asking for the Supreme Court to reverse Brunetti. First prediction, check.

As you will recall, the Court of Appeals for the Federal Circuit in Brunetti, struck down the scandalous and immoral bar on federal trademark registration, as a violation of Free Speech.

The government now contends that denying federal registration of scandalous or immoral matter does not constitute viewpoint discrimination, so Brunetti isn’t controlled by the Tam decision.

The scandalous and immoral registration bar has been applied since the 1905 Trademark Act, and “scandalous” is interpreted to mean, under current attitudesshocking to the sense of propriety.

Putting aside whether much of anything in our current culture can be considered shocking, if it’s possible, doesn’t shocking content express a certain viewpoint, namely one with shock value?

And, if Justice Alito was right in Tam that the disparagement bar is a “happy talk clause,” then isn’t the scandalous bar a “tranquility clause,” appropriately and fully cleansing of any shock value?

Will the Supreme Court decide to review the Brunetti decision? I’ve predicted it won’t, but it should, so I’m hoping to be wrong, it would be priceless to see the Court address Section 7:

“Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?”

That drum we have been beating hard, so kudos to the government in pressing Section 7:

“Congress’s directve that the USPTO refuse federal trademark registration to vulgar words and lewd sexual images is consistent with those First Amendment principles. Congress legitimately determined that a federal agency should not use government funds to issue certificates ‘in the name of the United States of America’ conferring statutory benefits for use of vulgar words and lewd sexual images. 15 U.S.C. 1057(a). Although [Erik Brunetti] has a First Amendment right to use a vulgar word as a mark for his clothing line, he has no comparable right to require the government to register vulgar terms, issue registration certificates for them in the name of the United States, inscribe them on the USPTO’s Principal Register, and bestow valuable benefits on the markholders’ use of the terms in commerce.”

Even if it ends again, with the Free Speech argument prevailing, for reasons beyond my beliefs (here, here, and here), nevertheless it would be helpful for predicting the fate of other portions of the Lanham Act that are content-based and that have been called into question. Wait and see:

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:

Before:

 

During:

 

 

After:

Steve Baird, Amanda Blackhorse, Joel MacMull, Simon Tam
Professor Lisa Ramsey, Steve Baird, and Professor Christine Haight Farley whispering in Steve’s ear

Highlights:

Amanda Blackhorse:

Message to Daniel Snyder: “You cannot force honor on someone.”

Steve Baird:

“Federal trademark registration is a giant exception to Free Speech.”

Other messages drawn from here, here, here, here, and here.

Simon Tam:

Interpreting USPTO: “They said we were too Asian!”

Joel MacMull:

The Tam case never should have been decided on Constitutional grounds!

Great questions from the engaged crowd, wish there had been much more time!

What were your highlights from the panel discussion?

UPDATE: Simon Tam, writing about Paper Justice, here.

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term.

Dykes on Bikes is a nonprofit lesbian motorcycle organization.  According to their website, the group’s mission is to “support philanthropic endeavors in the lesbian, gay, bisexual, transgender, and women’s communities, and to reach out to empower a community of diverse women through rides, charity events, Pride events, and education.”  In 2015, Dykes on Bikes tried to register their logo as a service mark for entertainment.  The application was put on hold pending the outcome of Matal v. Tam, as the Supreme Court considered whether Simon Tam could register his band name—The Slants.  In view of the Court’s landmark decision holding the disparagement provision of the Lanham Act unconstitutional viewpoint discrimination, Dykes on Bikes will move forward with its trademark application as well.

It was in 2003 when Dykes on Bikes first sought to register the name of their organization as a service mark for education and entertainment services.  Registration was refused on the basis that the mark was disparaging to lesbians.  The organization appealed to the TTAB, arguing that the word “dyke” had become a positive term and a symbol of pride and empowerment.  Dykes on Bikes won their appeal before the TTAB.  But when the mark was published for opposition, an individual named Michael McDermott filed an opposition claiming the mark was disparaging to men.  Ultimately, McDermott’s opposition was dismissed for lack of standing.  In particular, McDermott failed to show either (1) he possesses a trait or characteristic implicated by the proposed mark; or (2) others share the same belief of harm from the proposed mark.  The TTAB dismissed McDermott’s opposition and the Federal Circuit affirmed.  DIKES ON BIKES was successfully registered in 2007.

Because they had already won the disparagement battle for their first mark, Dykes on Bikes was surprised to face another disparagement refusal for a second mark.  In 2015, the group sought to register their logo as a service mark.  They sought review by the TTAB, and the case was put on hold pending the outcome of Matal v. Tam.  Dykes on Bikes also filed an amicus brief in the Tam case, arguing in favor of Tam’s position.  After the Supreme Court held in Tam that “the disparagement clause violates the Free Speech Clause of the First Amendment,” the DYKES ON BIKES W M C logo was approved for publication.

Dykes on Bikes and The Slants had similar goals.  As Dykes on Bikes described in their amicus brief, both groups “have chosen to reclaim self-referential terms as trademarks for the benefit of the groups those terms refer to.”  They also drew a distinction with respect to a certain NFL team name: “the Washington Redskins have chosen a term that is unrelated to the people who identify as members of the football team and is commonly understood to be a slur which members of the identified group have not reclaimed.  Whatever the constitutionality of the PTO’s treatment of the Redskins mark, the team’s use of that name is immoral and Dykes on Bikes encourages the Washington Redskins to give up their trademarked name as a matter of respect and decency.”

While the Tam decision may have opened the proverbial flood gates of offensive trademark applications, it also allows for these positive trademark uses in reclaiming derogatory terms.

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?

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it all started for me in the law, to share some thoughts on this topic with the Iowa Intellectual Property Law Society on Friday September 15, here are the details to attend.

In the meantime, here is my second installment on the important topic of Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II.

I’ll call it part of a continued, controlled Tam catharsis, with more food for thought and discussion of where the law is heading, especially with forthcoming Part III, exploring the implications of the Supreme Court’s Tam decision, especially the future of federal trademark dilution law.

As you may recall, Part I questioned the Supreme Court’s characterization of Section 2(a) as banning speech and the Court’s conflation of the federal government’s issuance of a trademark registration (and corresponding meaning of the resulting Certificate of Registration, issued in the name of “The United States of America,” and corresponding meaning of the federal registration symbol — ® — which cannot be used lawfully unless granted federal registration unlike © and ™) with the meaning of the underlying trademark subject matter sought to be registered.

As it turns out, the learned Professor Christine Haight Farley of American University Washington College of Law similarly recognized: “A broader critique is that the [Tam] court seems often to be speaking of trademarks when the issue before it is limited to the registration of trademarks.”

With Part II, while admittedly not having all the answers, I thought it might be productive to ask some probing questions about the Court’s decision to provoke further discussion and guidance:

  • Why didn’t the Tam Court acknowledge that the normal and historical operation of trademark law actually facilitates the complete suppression of certain speech, perhaps justifying special treatment and a unique approach from its typical First Amendment and Free Speech cases?
  • Why didn’t the Tam Court acknowledge the material difference in kind struck by Congress between denying registration on the one hand and enjoining and/or punishing trademark use on the other hand, as only the latter truly qualifies as a ban on speech?
  • Why didn’t the Tam Court acknowledge that our entire federal trademark law flows from the U.S. Constitution too? In particular, the Commerce Clause (Article I, Section 8, Clause 3), granting Congress the power: “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.”
  • Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?
  • Did the Tam Court gloss over the language in Walker v. Texas Division, Sons of Confederate Veterans, Inc., noting “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas”?
  • Why did the Tam Court not feel compelled to explain how and why the government actions of approving or disapproving marks for registration somehow does not take the form of speech?
  • Was it disingenuous for the Tam Court to say “trademarks are private, not government speech,” when it was apparently unwilling to specifically and directly say that the government’s act of registering a trademark, issuing a Certificate of Registration (in “the name of the United State of America”), and placing a trademark on the Principal Register, is not government speech?
  • Isn’t the proper comparison in Walker and Tam, the state government’s direct control over specialty license plates and the federal government’s direct control over Certificates of Registration and the Principal Register, so isn’t it a red herring to emphasize that the federal government doesn’t “dream up” the applied-for marks, since Texas didn’t “dream up” the multitude of specialty license plate designs either?
  • Doesn’t the federal government, through the USPTO, edit, modify, and amend applied-for marks (through required disclaimers, description of goods/services changes, description of the mark changes, and drawing changes, etc.), at times, to place them in proper condition for approval, making the Tam Court’s attempt at distinguishing Walker v. Texas less compelling?
  • Why was the Tam Court more willing to limit Walker v. Texas to its facts than upholding the disparagement bar in Tam as facially constitutional, and then limiting Tam to its facts, in the unlikely event the hypothetical concern of Congress attempting to amend the Copyright Act to refuse similar matter ever would arise in the future?
  • In other words, why was the Tam Court so willing to embrace the hypothetical concerns of the false Copyright comparison with a multitude of ways to fairly distinguish from trademark?
  • As to the concern of chilling speech by denying federal registration, isn’t it telling that during the entire more than 100 year history of federal registration in the U.S., only some 5 million federal registrations have issued, which most certainly is a drop in the bucket to the number of eligible unregistered marks in use throughout the same period of time?
  • The Tam Court relied, in part, upon a perceived “haphazard record of enforcement” of the disparagement bar, how difficult would it be to develop evidence showing a similar “haphazard record” in applying other statutory bars found in federal trademark law?
  • How can the Tam Court actually resist saying that trademarks are a form of commercial speech, when it previously held in Friedman v. Rogers that the use of trade names “is a form of commercial speech”?
  • Why didn’t the Tam Court ever once mention “public policy” or the “unconstitutional conditions” doctrine in its decision?
  • Did the Tam Court focus its sights on “viewpoint” as a way to avoid implicating too many other content based restrictions in the Lanham Act as becoming vulnerable to First Amendment challenges?

Stay tuned for Part III, as the Tam Court’s focus on “viewpoint” is the likely key to unlocking what additional portions of federal trademark law are vulnerable to future First Amendment challenges.

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items.

A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16.

Despite other confusing media reports that the WWE has “trademarked” 3:16, IPBiz is correct that an intent to use trademark application was filed by WWE at the end of July.

While I could hazard a guess, technically it is presently uncertain whether WWE intends a religious meaning, at least from the application file, as no specimen of use is of record yet.

Ironically, our firm’s firewall leaves me to hazard a guess on WWE’s intended meaning too.

Yes, our sturdy firewall has deemed anything appearing on the WWE website to be “unsafe or unsuitable” for access, so we may need the kind assistance of our dear readers to assist in our understanding of the meaning intended by the WWE for this claimed mark.

Either way, it will be interesting to follow the USPTO’s examination of this application, given the newly minted Examination Guide 2-17 on “Merely Informational Matter,” which directly targets religious matter, among other matter (citations omitted from below quote):

Some proposed marks comprise direct quotations, passages, or citations from religious texts (e.g., JOHN 3:16 and I AM THE WAY, AND THE TRUTH, AND THE LIFE. NO ONE COMES TO THE FATHER EXCEPT THROUGH ME).  Religious texts are holy books or scriptures, such as the Bible, Quran, Torah, and Diamond Sutra, which the different religions or spiritual movements consider sacred or essential to their religious traditions and beliefs. Such quotations, passages, or citations are often used by the providers of goods/services (and by consumers) as an expression of affiliation with, support for, or endorsement of the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing such wording used in this manner in the marketplace, consumers are unlikely to perceive it as indicating source and instead would perceive the wording as conveying a merely informational message of religious affiliation, endorsement, or support for the messages in the texts.

Where a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, such wording fails to function as a mark.  The refusal applies regardless of whether the identified goods/services themselves are religious in nature.  However, the inclusion of religious goods/services further supports this refusal.  The following examples illustrate this point:

  • Mark is comprised, in its entirety, of a direct quotation/passage and/or citation from a religious text (e.g., Allah is the Light of the heavens and the earth The Qur’an, Surah An-Nur 24:35; I AM THE WAY, AND THE TRUTH AND THE LIGHT.  NO ONE COMES TO THE FATHER EXCEPT THROUGH ME; or MATTHEW 19:26).  The entire mark must be refused registration because the matter fails to function as a mark.

  • Mark is comprised, in part, of a direct quotation/passage and/or citation from a religious text and registrable matter (e.g., Hear, O Israel: The Lord is our God; the Lord is one and the image of the Earth being held in a pair of hands; ROMANS 8:28 and an image of a teddy bear).  The direct quotation/passage and/or citation must be disclaimed because they fail to function as marks.

Do you think the WWE will be wrestling with USPTO over the meaning of 3:16 soon?

If so, how might the USPTO explain the issuance of these registrations: 3:16, Studio 3:16, and 3:16 Lure Co?

And, finally, might the newly minted examination guide conflict with the recent Supreme Court decision in Tam, holding that the USPTO’s refusal of federal trademark registration based on viewpoint violates Freedom of Speech?

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis.

As a drum roll leading up to that discussion, and since there is so much to digest in the recent Supreme Court decision in Tam, I thought I’d do a series of posts on the decision and its implications, beyond what I’ve already written.

In this first installment, my focus will be on critiquing (as a trademark type) the opinion of the Court, that is, the portion of the decision written by Justice Alito, to which all seven of the other Justices agreed (the ninth, Justice Gorsuch, did not participate in the decision).

In a nutshell, my principal problem with the Court’s opinion is that all eight Justices have conflated the federal government’s issuance of a Certificate of Registration with the underlying applied-for trademark. The Court ignored that the meaning of each is distinct.

The meaning of the underlying trademark is one thing, determined by how the relevant public perceives and understands the applied-for mark. As an aside, the Court seemed more interested in Mr. Tam’s intentions in using an admitted racial slur as a trademark.

Yet, the meaning of the Certificate of Registration is quite different. It signifies that the federal government has approved the applied-for trademark for registration and issued a federal registration “in the name of the United States of America.

It would be easier to accept and respect the decision of the Court had it acknowledged and attempted to explain why Congress is powerless under the Commerce Clause to regulate what the USPTO may issue “in the name of the United States of America.”

Perhaps the Court’s conflation in Tam should be no surprise, as a few years ago, the unanimous Supreme Court in B&B Hardware, essentially conflated the right to register a trademark with the right to use the trademark.

Another concerning aspect of the Court’s opinion is how it seriously overstated what was at issue in Tam. It held that in denying federal registration to a mark consisting of a racial slur, the disparagement clause of Section 2(a) of the Lanham Act “violates the Free Speech Clause of the First Amendment” because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

To be clear, the only speech even potentially banned under Section 2(a) of the Lanham Act relates to forbidding the use of the federal registration symbol — ® — next to the racial slur, because that symbol may not be used, unless a Certificate of Registration has been issued for the mark in question.

To the extent the ® symbol constitutes speech at all, the symbol ought to be considered government speech (which is outside First Amendment scrutiny), since federal governmental approval is required in order to use it in commerce.

The Court missed the point when it stated the obvious: “Trademarks are private, not government speech.” The better and more relevant question would have asked whether the ® symbol is purely private speech. Seems obvious to me it’s not.

While the underlying trademark has a certain meaning and constitutes private speech, the federal government’s issuance of a Certificate of Registration and allowing the use of the ® symbol to signify this fact, cannot fairly be considered private speech. Instead, by definition, it connotes governmental approval.

On this point, the Court was unconvincing when it cited a 55-year old concurring opinion from the late Federal Circuit Judge Giles Rich for the proposition “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”

In that case, Judge Rich claimed, at least in 1962: “The purchasing public knows no more about trademark registration than a man walking down the street in a strange city knows about legal title to the land and buildings he passes.”

In my experience, all sorts of folks know that the ® symbol cannot be used without first obtaining approval from the federal government. Goodness, Forbes writes about it, National Law Journal, admitted non-lawyers, and a multitude of others do too, including us.

Friends, what do you think, do the folks understand and appreciate that the ® symbol is special and cannot be used without first obtaining approval from the federal government?

-Wes Anderson, Attorney

I hesitate to add to the fallout from Matal v. Tam, the Supreme Court’s decision last week invalidating the disparagement clause of Section 2(a) of the Trademark Act. That said, here I go.

Many trademark practitioners, separate and apart from their reaction to the decision itself, now ask “where do we go from here?” The next shoe to drop, it seems, will see courts assessing the constitutionality of other provisions of the Lanham Act. One prevalent target – dilution, and it seems some observers are not optimistic about its future. Over at SCOTUSblog, Lisa Ramsey suggests “dilution laws and other expansive trademark doctrines that allow the government to prohibit or punish non-misleading uses of protected trademarks may not survive constitutional scrutiny after Tam.” She argues “Companies accused of trademark dilution may be able to argue that the dilution statute is an unconstitutional content-based regulation of non-misleading expression and is facially invalid under the First Amendment.”

This raises a broader question, one I have wondered since first studying trademark law: is the “bite” of trademark dilution as bad as its “bark”? It’s certainly fodder for trademark litigation – dilution claims are part and parcel of virtually all infringement complaints for famous trademarks. For a quick primer, “Trademark anti-dilution laws are intended to enable trademark owners to prevent the gradual weakening or whittling away of the strength of their marks, through blurring or tarnishment, even if the public is not likely to be confused.”

Screen Shot 2017-06-30 at 8.23.51 AM Screen Shot 2017-06-30 at 8.23.45 AM

An aptly-timed study from New York University entitled Is Trademark Dilution a Unicorn? An Experimental Investigation raises the same question, and raises a controversial conclusion: “dilution is theoretically plausible, but remains empirically unproven.” According to the study, the conventional wisdom to support trademark dilution relies on “a set of studies showing that respondents are slower to match brands to their product categories and product attributes after being exposed to an advertisement for a different product using the same or a similar brand name.” But the study’s authors say these studies were flawed – their “evidence of trademark dilution is actually the artifact of a flawed experimental design that fails to control for the effect of seeing a surprising advertisement.”

Food for thought as the Tam precedent spreads into other trademark statutes – the constitutional question may be less compelling than the empirical question – that is, whether dilution statutes protect consumers at all.

This week’s Matal v. Tam (formerly Lee v. Tam) Supreme Court ruling serves as a reminder that free speech is a two-way street.  It also suggests the value of a sympathetic litigant, at least in terms of public response.

Many rallied behind Simon Tam and his rock band, The Slants.  The band members, who are all Asian American, sought to reclaim and diffuse a historically derogatory term by naming their band “The Slants.”  The band first tried to register THE SLANTS with the Trademark Office in 2010.  The Office rejected the application under the disparagement clause of the Lanham Act.  15 U.S.C. 1052(a).  The band appealed to the Trademark Trial and Appeal Board, and later to the Federal Circuit, which ultimately led to review by the Supreme Court.

The resulting narrative told the story of a group of young musicians pushed out by a bureaucratic system and an antiquated law dictating morality.  Tam and his band were the good guys.  There was no public outcry calling for the band to change its name.  They were not viewed as insensitive or bigoted, at least in part because Tam and the other band members are Asian American and thus belong to the group presumably disparaged by the term.  For many, it was easy to rally behind the argument that The Slants have a First Amendment right to obtain federal trademark protections for their band name.  The Supreme Court’s decision that “the disparagement clause violates the Free Speech Clause of the First Amendment,” thus removing The Slants’ block to registration, was a well-received public victory.  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *20 (U.S. June 19, 2017).

However, as many have since pointed out, this decision was a win not only for The Slants, but for anyone seeking federal registration of an otherwise disparaging mark.

In 2015, a federal district court affirmed the USPTO’s cancellation of THE REDSKINS registered trademarks.  At the time, the district court’s decision that “the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny” was lauded as a moral victory.  Pro-Football, Inc. v. Blackhorse, 112 F.Supp.3d 439, 452 (E.D. Vir. 2015).  The New York Times Editorial Board reported, “Slurs Don’t Deserve Trademark Protection.”  The Supreme Court’s First Amendment decision means the NFL team will now be able to recover their federal registrations for THE REDSKINS.

The Slants and The Redskins each wanted federal trademark protections for racially derogatory terms, but presented entirely different political positions and applicants.

The long-fought battle over cancellation of the Redskins marks began with a group of Native Americans arguing disparagement.  In this narrative, the team’s owners were often depicted as the villains callously profiting from a racial slur.  The Navajo Nation filed an amicus brief in support of the decision to cancel the trademarks.  Media outlets and NFL announcers refused to use the team’s name in their reporting.  While many also saw The Redskins as leading the charge in the fight against political correctness, The Redskins undeniably faced stronger public opposition than The Slants.

The differences in these cases, and in the  trademark applicants themselves, serve as a reminder that free speech for one necessarily means free speech for all.  Perhaps nothing underscores this point better than the New York Times Editorial Board’s recent statement that they have “reconsidered [their] underlying position” with respect to the team’s name following the Tam decision.

While many will surely still advocate for a new team name, if we are to allow The Slants to enjoy the benefits of federal registration, we must allow The Redskins–and others–the same opportunity.

Justice Kennedy said it best: “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.  The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *25 (U.S. June 19, 2017) (Kennedy, J. concurring).