27 September 2016TrademarksRobert Kenney

The real meaning of free speech

Under the Lanham Act, 15 USC, §1052(a), aka section 2(a), a trademark which “consists of or comprises immoral, deceptive or scandalous matter, or which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols …” shall be refused registration.

Applicants in two pending cases with opposite outcomes are seeking guidance from the US Supreme Court on the issue of whether the disparagement provision of the Lanham Act violates the free speech clause of the First Amendment; is impermissibly vague under First and Fifth Amendments; and violates the Fifth Amendment guarantee of due process.

It is highly likely the court will grant certiorari since both cases involve the constitutionality of a portion of the Lanham Act. Moreover, the outcome of these cases could have ramifications for the “immoral, deceptive or scandalous matter” portions of the statute.

In re Tam

Simon Shiao Tam, an Asian-American musician, sought to register the mark ‘The Slants’ for “entertainment in the nature of live performances by a musical band”. The US Patent and Trademark Office (USPTO) refused registration on the grounds that the mark disparages Asians. The Trademark Trial and Appeal Board (TTAB) affirmed, finding that a “substantial composite” of the group is disparaged by the mark and that the “ethnic slur” character of the mark was admitted by Tam.

The US Court of Appeals for the Federal Circuit, sitting en banc, overruled the TTAB, holding that the disparagement provision of section 2(a) is an unconstitutional restriction of free speech. The USPTO then petitioned the Supreme Court with a writ of certiorari.

Blackhorse v Pro-Football

A group of young Native Americans, including Amanda Blackhorse, petitioned to cancel several trademark registrations for the mark ‘Redskins’, the name of the professional football team in Washington, DC. The TTAB concluded that “these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered”.

"the substantial government interest asserted by the USPTO is to refrain from disparaging or to be seen as supporting disparagement of particular groups of people."

Pro-Football appealed to the US District Court for the Eastern District of Virginia, which upheld the decision of the TTAB. The court held that the ‘Redskins’ marks “consisted of matter that ‘may disparage’ a substantial composite of Native Americans during the relevant time period”. It also held that section 2(a) of the Lanham Act “does not implicate the First Amendment” and that “the federal trademark registration programme is government speech and is therefore exempt from First Amendment scrutiny”.

Finally, the court held that section 2(a) is not void for vagueness and that a trademark registration is not “property” which can be subject to the unlawful taking provisions of the Fifth Amendment. Pro-Football appealed to the US Court of Appeals for the Fourth Circuit, and then, before any hearing in that court, petitioned the Supreme Court with a writ of certiorari requesting its case be considered along with the In re Tam case.

Because Supreme Court rule 11 allows the granting of certiorari before judgment of a lower court if the case is a valuable companion to another case on the court’s docket, Blackhorse appears ripe for review as a companion to In re Tam.

Free speech protection

The First Amendment prohibits, among other things, the passage of any law “abridging the freedom of speech”. While the government’s power to restrict free speech is extremely limited by this Amendment, where the speech is commercial in nature and there is a substantial government interest in doing so, such speech can be limited to advance the substantial government interest and only as extensively as necessary. Because a trademark acts to identify the source of goods or services, it is clearly “commercial speech”.

With respect to ‘The Slants’ and ‘Redskins’ marks, the substantial government interest asserted by the USPTO is to refrain from disparaging or to be seen as supporting disparagement of particular groups of people.

Unique to the Blackhorse petition is the question of whether the disparagement provision of 2(a) is unconstitutionally vague in that it does not define a test for disparagement, and that cancelling the ‘Redskins’ registrations is an unconstitutional taking of property, prohibited by the Fifth Amendment.

Defining disparagement

Disparagement is determined under a two-part test: (1) what is the likely meaning of the matter in question, referencing dictionary definitions, as well as the relationship of the matter to the other elements of the mark, the nature of the goods or services and the manner in which the mark is used in the marketplace; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite (not necessarily a majority) of the referenced group.

The test has not always led to predictable or consistent outcomes. For example, ‘Have You Heard Satan Is A Republican’ was refused registration because it disparaged the Republican Party, while ‘The Devil Is A Democrat’ was not refused registration for being disparaging. Similarly the marks ‘Gringo BBQ’ and ‘Gringo Style Salsa’ were registered (where ‘gringo’ is referenced in the dictionary as “often disparaging”), while ‘Heeb’ (an ethnic slur toward Jews) and “Wet Bac/Wet B.A.C.” (a variation of the derogatory term “wet back” for Mexicans) were refused registration.

What next?

In the event certiorari is granted in both cases, one of two potential scenarios could then result. In scenario one, the court reverses the Federal Circuit’s In re Tam decision and affirms the TTAB ruling to cancel the ‘Redskins’ registrations. The result would be that section 2(a) survives and disparaging marks cannot be registered.

In scenario two, the court affirms the In re Tam decision and reverses the TTAB judgment to cancel the ‘Redskins’ registrations. The disparagement provision of section 2(a) would be therefore be unconstitutional and disparaging marks would be registrable. The question might then be whether the prohibitions against “immoral”, “deceptive” and “scandalous” marks would likewise be ripe for attack as unconstitutional restrictions of free speech. Depending on the court’s decisions, the effect of scenario one could reach far beyond disparagement.

Robert Kenney is a partner at Birch Stewart Kolasch Birch and uses nearly 30 years’ experience in patent, trademark and copyright litigation, trademark prosecution, counselling and portfolio management to help his clients protect, profit from and enforce their valuable IP rights, including licensing and IP asset acquisition. He can be contacted at:

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