Section 2(a) of Lanham Act

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:

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.

Last Friday was a big day for Erik Brunetti. He won his appeal at the CAFC, opening the door to federal trademark registration of his four-letter-word “fuct” clothing and fashion brand name.

The same door swung wide open for all other vulgar, scandalous, and immoral designations used as trademarks, because the 112-year old registration prohibition was found to violate free speech.

You may recall where I take a knee on the free speech argument as it relates to the government’s issuance of federal trademark registrations, see here, here, here, here, here, here, and here.

I’m continuing to believe Congress has the power under the Commerce Clause to distance itself from and not be viewed as endorsing certain subject matter on public policy grounds, especially when Certificates of Registration are issued “in the name of the United States of America.”

Having said that, I’m thinking the federal government has done a less than stellar job of articulating and advocating for this right, which may very well explain the current state of affairs.

What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.

The CAFC did not decide whether the “scandalous and immoral” clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.

The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.

Asked before, but will dilution by tarnishment survive this kind of strict free speech scrutiny? According to the CAFC in Brunetti, strict scrutiny applies even without viewpoint discrimination.

All that leads me to explore with you Brunetti’s line of “fuct” clothing, and in particular, this t-shirt which is surprisingly for sale online, here.

We’ll see for how long it’s available online, or whether Mr. Brunetti will need to Go Further, to get another brand’s attention, hello, Ford:

It’s hard to imagine the famous Ford logo, consisting of the distinctive script and blue oval, not being considered sufficiently famous and worthy of protection against dilution — without a showing of likelihood of confusion. But, given Tam and Brunetti, is a dilution by tarnishment claim even viable, or is it just another federal trademark provision about to fall, in favor of free speech.

Just because Mr. Brunetti may be anointed with a federal registration for the word “fuct” doesn’t mean his depiction of the word in the above style and design is lawful for use or registration.

So, if Ford does pursue the Brunetti t-shirt, under a dilution by tarnishment theory, and if it were considered to be a viable claim, in the end, might Mr. Brunetti be the one, let’s say, uniquely suited — to vanquish tarnishment protection from the Lanham Act?

Or, will another potty-mouth brand be the one to seriously probe the constitutionality of dilution protection against tarnishment?

Last but not least, and sadly for me, last Friday also was a big day for Mr. Daniel Snyder too.

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?

Today marks the 25th anniversary of the filing of the petition to cancel the R-Word registrations held by Pro-Football, Inc., the NFL franchise playing near the Nation’s capital.

Indian Country Today has published an interview with Suzan Shown Harjo, lead petitioner in Harjo et al v. Pro-Football, Inc., and organizer of Blackhorse et al v. Pro-Football, Inc.

Thanks to Indian Country Today and Suzan Shown Harjo for sharing this interview. Its documentation of history is so important for anyone who cares where we’ve been as a country and where we’re headed; it is valuable and timeless, powerful and compelling.

I’m so thankful to Suzan for the opportunity to play a small part in this long yet unfinished history, and here is a photo of us together on May 15, 2015, at a conference in Hinckley, Minnesota, during a celebration honoring her lifetime of advocacy for Native peoples:

Suzan’s heretofore and ongoing work is truly remarkable and a testament to who she is, even in the face of ignorant vitriol, and to how many lives she has touched and continues to touch in such a profound, generous, and meaningful way.

As I reflect on the historic petition to cancel we filed together on September 10, 1992, one thing I can’t get out of my mind is the national press conference question I answered from the Washington D.C. press corps, something like “what about the First Amendment?”

As I recall, my response was, something like, the beauty of this cause of action is that the First Amendment is not implicated because removing the federal government’s erroneous approval of the racial slur doesn’t compel the team to change the name, having said that, it is of course our hope that the team does the right thing and pick another name.

Who could have guessed it would take nearly a quarter century to reverse prior court of appeals precedent (McGinley) saying Section 2(a) did not violate Free Speech or the First Amendment, and then to have the Supreme Court agree that refusing federal registration of disparaging matter under Section 2(a) of the Lanham Act is viewpoint discrimination and a violation of Free Speech.

Thankfully much awareness has been raised and good has been done over the past quarter century, while the NFL and Washington franchise double down together on their joint investment to retain exclusive rights in a racial slur.

Hopefully with increased awareness raised and the movement and pressure continuing, we won’t have to wait another quarter century for justice and clearer thinking on this issue by the NFL, FEDEX, and other NFL sponsors, if not Daniel Snyder himself.

As I reflect back a quarter century ago, to the day, it was never about banning the team’s Freedom of Speech, it was about removing the federal government’s approval of a racial slur as a federally-registered trademark, and providing team ownership with a financial incentive to reconsider their choice to ignore the obvious, as Suzan has noted:

“We liked the approach of a pocketbook incentive case that did not force a name-change, but counted on the greed of the team owner to drop the name if exclusive federal trademarks were cancelled.”

“The pocketbook approach put things squarely where pro sports differed from educational sports: money. In most name and symbol changes made in educational sports, we had a way of discussing the issues and solutions, because there almost always were educators and officials who genuinely cared about the well-being of the students. In pro sports, even the health and safety issues seemed focused on liability and not on human beings, and some paid fans seemed physically provocative, while others seemed orchestrated online to attack and defame those of us who were challenging the NFL franchise in orderly legal forums.”

“Another reason I liked the pocketbook approach was that it didn’t impede anyone’s free speech. I was at WBAI-FM  in 1973, when the “seven dirty words” case started down the road to the Supreme Court’s 1978 ruling against free speech. The free speech flagship station of the Pacifica network, WBAI aired a cut from Comedian George Carlin’s “Class Clown” album and a listener complained to the Federal Communications Commission that his young son was wrongly exposed to dirty words. George Carlin’s “Seven Words You Can Never Say on Television” was based on an earlier routine by Comedian Lenny Bruce that was an excuse for one of his many arrests and jailings for using dirty words. The upshot of FCC v. Pacifica Foundation was that the federal government can restrict free speech in certain instances, the opposite of the Court’s 2017 ruling in The Slants case against the PTO, which rendered part of the trademark law unconstitutional as violative of the First Amendment. We never thought we were violating the NFL’s freedom of expression by using the same section of the trademark law.”

Ironically, as team owner Daniel Synder freely and proudly admits, the team’s ability and commitment to continue using the name will never change, even in the face of the mountain of evidence demonstrating its offensiveness and meaning as a racial slur, and even in the face of losing on the merits three times (twice at the TTAB, once at the E.D. Va.), or more.

So much for the Supreme Court’s concern that Section 2(a) actually chills Freedom of Speech, because according to Snyder, even after losing on the merits he has reaffirmed: “We will never change the name of the team,” “It’s that simple. NEVER — you can use caps.”

So, in the end, it is about the money, and the NFL clearly has had sufficient funds to defend the indefensible for a quarter century now, so isn’t it time FEDEX and other NFL sponsors step up and get on the right side of this issue, with their money? Let’s all follow the money.

Here’s to you Suzan, be well, Aho.

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

Lee Corso (former coach and ESPN football analyst) frequently utters this famous sports media catchphrase on ESPN’s “College GameDay” program: “Not so fast, my friend!

The first three words of that phrase come to mind upon hearing that THRILLED Daniel Snyder (majority owner of the NFL football franchise nearest the Nation’s Capitol) is celebrating Simon Tam’s (and Tam’s talented lawyers’) recent victory at the Supreme Court.

Excluded are the last two words as inapplicable, as I’ve never met Mr. Snyder, so I can’t say he’s my friend, and if even a small fraction of what Rolling Stone says about him is true, friendship seems unlikely, unless of course, he engages the services of an expert to rebrand the franchise (without the racial slur), something I asked for eight years ago.

Yet, “not so fast,” as a week ago, the government filed a brief with the Court of Appeals for the Federal Circuit, asking the Federal Circuit to affirm the TTAB’s refusal to register FUCT based on the scandalous portion of Section 2(a) of the Lanham Act, despite Tam.

The Department of Justice further contends that the Supreme Court’s ruling in Tam does not implicate the First Amendment in terms of scandalous matter, because unlike the stricken disparagement portion of 2(a), the remaining scandalous portion is viewpoint neutral.

To the extent the Justice Department prevails and the current bar on registration of “scandalous” matter survives First Amendment scrutiny with the Federal Circuit’s review in the Brunetti case, this could impact Daniel Snyder’s currently suspended R-Word trademark applications (here, here, and here), and the NFL’s suspended Boston Redskins application.

While the decades-old R-Word registrations challenged in Harjo and Blackhorse appear safe from cancellation given the ruling in Tam, what stops others from opposing registration of any future R-Word applications (or any of the currently suspended applications, if published) as containing scandalous matter in violation of Section 2(a) of the Lanham Act?

If the scandalous bar to registration survives First Amendment scrutiny, opposers (unlike cancellation petitioners) would have the significant benefit of only needing to show (at the time of an opposition decision) that the current R-Word applications have scandalous matter.

It’s a question of the timing of proof necessary, in other words, no time machine would be required to determine how the relevant public perceived the R-Word marks back in the late 1960s when the first R-Word registration issued for the team; those would not be at issue.

It’s also a question of who comprises the relevant public. For disparaging matter, it was Native Americans. For scandalous matter, it would be the general public, although not necessarily a majority, but instead a “substantial composite of the general public.”

The Act’s present prohibition on the registration of scandalous matter reaches matter that is “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” Wouldn’t unambiguous racial slurs qualify for this treatment?

Who’s ready to carry the next, but new flame, if needed, to oppose registration of any R-Word applications that publish for opposition, contending that a substantial composite of the general public finds the applied-for marks “shocking” to their sense of propriety and/or “offensive” to their conscience?

Even those who fought hard to undue the disparagement provision of Section 2(a) for Simon Tam, see Daniel Snyder’s team name in a very different light, and let’s also say, not a very sympathetic light. And, the general public today is not the public from 50 years ago.

Finally, given the vast public attention and support this issue has received over the last quarter century, it would be more than interesting to see what kind of a record could be developed on the scandalous ground for registration refusal, today, and not decades ago.

So, not so fast, let’s see what happens to the scandalous portion of Section 2(a) in Brunetti, before allowing Daniel Snyder to celebrate Tam too strongly, my friends.

UPDATE: The NFL’s Boston Redskins trademark application has been removed from suspension, reports Erik Pelton, so, who will oppose if published, and why hasn’t the USPTO issued a new refusal on scandalous grounds yet?

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?

HowardMcGeeTeam

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!

McCarthyInstituteBanner

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?