Musician Simon Tam has won a place in legal history and in the hearts of some football fans, for reasons having nothing to do with music: he and his attorneys have convinced the U.S. Supreme Court that it was illegal for the U.S. Patent and Trademark Office to deny registration to trademarks that might disparage other people – like the name of his Asian-American dance rock band, The Slants. The Court decided on June 19, 2017 in Matal v Tam, 582 U. S. ____ (2017), that the prohibition on registration of marks that consist of or contain “matter which may disparage … persons, living or dead, …” set forth in 15 U.S. Code § 1052(a), was an unconstitutional content-based restriction on speech. As a result, Tam and others seeking to register marks of this kind can seek registration without being subject to evaluation based on the message that the mark conveys.
Washington Redskins fans have been doing touchdown dances for Tam, because while Tam was pursuing his cause, the Redskins team was trying to move the ball forward on their own appeal from the cancellation of a number of the teams REDSKINS registrations based on the same disparagement clause, on the basis that the mark is disparaging toward Native Americans.
Tam argued to the Court that his intention that the band and its name be a vehicle for expressing his views on discrimination against Asian-Americans, in part, by ‘reappropriating’ or ‘reclaiming’ a word that was previously a derogatory slur by adopting it as a badge of pride, as homosexuals have done with the words “queer” and “gay,” U.S. Midwesterners have done with “hoosier and “badger,” the religious groups Quakers and Methodists have done with their names. He even argued that THE SLANTS, when taken in context, was not disparaging. But such arguments are not necessarily exculpatory: the Trademark Trial and Appeals Board of the USPTO considering Tam’s appeal from the refusal of registration, said that Tam’s intention was overshadowed by the fact that “a substantial composite of the referenced group find the term objectionable.’” The panel of the Federal Circuit came to the same conclusion and affirmed the refusal of registration in an order that was quickly withdrawn for en banc review which went in Tam’s favor on First Amendment considerations, in December 2015.
The Supreme Court’s Matal v Tam decision is of immediate importance to the Washington Redskins team, whose appeal before the 4th Circuit Court of Appeals has been held in abeyance pending the outcome of the Tam case. In view of the Supreme Court’s ruling, the Redskins have asked for a ruling on their appeal to reverse the lower court’s order for cancellation of the Redskin’s marks. Observers should also look for developments in In re Brunetti, a pending 4th Cir. Appeal from a 2(a) refusal in which the U.S. Attorney General argued that the Federal Circuit’s Tam reasoning would not necessarily carry over to Section 2(a)’s bar on registering scandalous and immoral marks, and that the government’s interest in refusing federal registration of scandalous trademarks, such as those that are profane or sexually explicit, may differ in some ways from its interest in refusing federal registration of disparaging trademarks.
Owners of other allegedly disparaging marks will follow suit, but since the Tam decision turned on content-based discrimination of some marks over others, it may reach other parts of 15 U.S. Code § 1052(a), removing an obstacle to registration for marks that may be considered immoral or scandalous, such as PORNO JESUS for DVDs featuring music videos and other entertainments; F**K PROJECT (and design) for leather and imitations of leather and other goods, or WIFE BEATER for t-shirts, all previously refused registration under Section 2(a). At this time, is it not clear whether the U.S. Attorney General will maintain its position that Tam does not necessarily apply beyond disparaging marks and would ask the Court to rule separately on that question.
Some may lament the loss of an effort to keep the U.S. trademark registers free from highly objectionable material. Indeed, The Fred T. Korematsu Center for Law and Equality (“Korematsu Center”), Hispanic National Bar Association (“HNBA”), National Asian Pacific Americans Bar Association (“NAPABA”), National Bar Association (“NBA”), National LGBT Bar Association (“LGBT Bar”), and National Native American Bar Association (“NNABA”) joined in an amicus brief and powerfully argued that racially derogatory trademarks are comparable to discriminatory commercial speech regulated under Title VIII of the Civil Rights Act. As a reminder of how racism in commerce inflicts a devastating toll on people who have to explain to their children why they are being treated differently, the amici quoted Martin Luther King, Jr. from his Letter from a Birmingham Jail:
[Y]ou suddenly find your tongue twisted and your speech stammering as you seek to explain to your six-year old daughter why she cannot go to the public amusement park that has just been advertised on television, and see tears welling up in her eyes when she is told that Funtown is closed to colored children, and see the depressing clouds of inferiority begin to form in her little mental sky . . .
They went on to argue that disparaging trademarks do the same kind of damage:
“[I]f the decision below stands, “Spics Not Welcome” could become a federally protected trademark. And if that happens, the Latino father—like the black father described in Dr. King’s letter—would have to explain to his daughter, “tongue twisted and [his] speech stammering,” why these signs are not only allowed in modern-day America, but also coated with the legitimacy of a federally approved trademark.
In making this argument, the amici were drawing Judge Reyna’s dissent in the Federal Circuit’s en banc decision on Tam, in which he argued, in part: “Whether a restaurant named “SPICS NOT WELCOME” would actually serve a Hispanic patron is hardly the point. The mere use of the demeaning mark in commerce communicates a discriminatory intent as harmful as the fruit produced by the discriminatory conduct.”
More could be said about the full analysis undertaken by the Supreme Court. – whether trademarks are commercial speech and therefore entitled to lesser protection than other speech; whether registration constitutes government speech or is a form of subsidy or government program, under which content-based limitations are sometimes acceptable. In the end, the Court balanced the government’s interests in preventing speech that offends and in protecting the orderly flow of commerce against the protection of free speech, and concluded that “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.””
Does this mean that we should expect a swell of applications for trademarks that seem intended to disparage, shock and offend? Maybe so. Certainly, there are people, groups and other legal entities out there who are dedicated to causes or value that could not be advanced by way of a trademark registration until now. I suspect that there are also those who, like ill-mannered teenagers finding themselves away from parental oversight for the first time, will try to register salacious marks simply as an act of defiance. However objectionable any of those newly permitted messages might be, those are the very messages that the First Amendment is intended to protect. The rest of us are equally protected under the First Amendment with the freedom to answer back. Freedom of speech, after all, was gifted to us by the founders as a means of ensuring an ability to participate in public debate, free from abridgement by government.