US trademarks: the battle between free speech and disparagement

Artists and activists have historically challenged the accepted views of society. In the US, there is a long history of people daring to provoke the public and government and then finding themselves in the highest courts.

The First Amendment has always provided the legal space for such individuals to say something ‘offensive’ or ‘disagreeable’ without fear of retribution. Disputes concerning just how far free speech rights extend regularly reach the courts in the US and often capture the imagination of the general public. But where does free expression end and disparagement begin?

One of the most recent cases dealing with free speech is In re Tam, which was last ruled on in December 2015 after several earlier decisions. The case focused on whether the US Patent and Trademark Office (USPTO) was correct to reject Simon Shiao Tam’s trademark application for ‘The Slants’, the name of his Asian-American rock band.

On first refusal, the trademark examiner cited the cancellation of the band’s performance at the Asian Youth Conference as evidence that the band’s name was disparaging, despite the organisers signing a declaration that the performance was stopped because of logistical reasons and concerns about the band’s lyrics.

A sense of frustration

Such procedural issues were not rectified in subsequent decisions in the case, and Tam has spoken about his frustration at the USPTO’s continued assertion of the event as evidence of the disparaging nature of the band’s name.

Shortly before Christmas, however, the US Court of Appeals for the Federal Circuit ended a topsy-turvy year for Tam. It ruled that the provision in section 2(a) of the Lanham Act that deals with disparagement cannot be used to reject a trademark. The central point of the case was whether a trademark constitutes private, commercial or government speech.

Tam says: “I do believe that the federal circuit missed an opportunity to address the competence [of the evidence]—from the idea of knowingly using false evidence to selecting only from cherry-picked dictionary entries and using race as a factor for denying rights. However, if the court had done so, they would not have been able to address the constitutionality of section 2(a).

“Our case was originally built on technical, evidentiary, and procedural issues. If the court had recognised those problematic errors, then that would have superseded the necessity or ability to tackle a larger, wider ruling,” he adds.

The December 2015 ruling is a 110-page document comprising four differing stances by the judges on the constitutionality of the disparagement provision of section 2(a).

“Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful,” said Judge Kimberly Moore, who was joined by eight fellow judges on the panel.

In her lengthy judgment, Moore said that the section 2(a) disparagement provision functions to stifle the use of “certain disfavoured messages”.

“With his band name, Tam makes a statement about racial and ethnic identity. He seeks to shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this—indeed, because of it—Tam’s band name is expressive speech,” she says.

The price of free speech

The potential effect now is a number of “culturally insensitive” trademark applications being granted by the USPTO, says Peter Sullivan, partner at law firm Foley Hoag.

“Applications are rejected every year on the basis that they are disparaging; others are not filed because they know the law is there. Without the law in place, I expect to see more culturally insensitive trademarks. But First Amendment advocates will say that is the price you pay.”

“While a trademark alone as a word placed on private property is not government speech, once it claims that federally registered status, it becomes more than the private owner’s speech."

This is a consequence of the decision that was not overlooked by Moore, who noted that “whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration”.

Section 2(a) of the Lanham Act is not a legal provision that Sally Abel, partner at law firm Fenwick & West, has come up against in her 30 years of practising trademark law.

But she says “the possibility of the case going to the US Supreme Court is astounding, and perhaps symptomatic of a greater interest shown by the high court in trademark issues in recent years”.

What concerns Abel is that this could be the beginning of a steady process of eroding parts of the Lanham Act.

“It’s only the beginning, but the federal circuit really opened the door to chipping away at section 2(a). What is immoral, scandalous or disparaging is all in the eyes of the beholder and I wonder what other parts of the Lanham Act become unconstitutional. That is the bigger question,” she says.

Abel’s concerns were echoed by Judge Alan Lourie, who in dissenting from the majority view, raised the question of whether there was such a thing as stare decisis, the doctrine of precedent.

“One wonders why a statute that dates back nearly 70 years—one that has been continuously applied—is suddenly unconstitutional as violating the First Amendment?” he says.

For Lourie, the current case does not really concern the First Amendment.

“The trademark holder may still generally use the mark as it wishes; without federal registration, it simply lacks access to certain federal statutory enforcement mechanisms for excluding others from confusingly similar uses of the mark.

“While a trademark alone as a word placed on private property is not government speech, once it claims that federally registered status, it becomes more than the private owner’s speech. It is not simply private speech, similar to the holding of a placard in a parade, he adds”.

Keeping a distance

One winner from the federal circuit’s decision is the Washington Redskins American football club, which had six trademarks covering the term ‘redskin’ revoked on the basis that they were disparaging. While the Tam and Redskins cases both concern the legality of section 2(a), Tam has always been keen to distant himself from the team.

Tam’s argument is that he is regaining a pejorative term used to describe Asian people, whereas the National Football League club has been publicly criticised for contributing to the “dehumanisation” of Native American people by Amanda Blackhorse, who originally brought the case against the club.

Nevertheless, the Redskins will be heading to the US Court of Appeals for the Fourth Circuit with confidence.

The story is not likely to end there, however, with many expecting the Supreme Court to step into what are arguably the most highly watched trademark cases of the past few years.