On June 19, 2017, the United States Supreme Court held that a portion of the first clause of the U.S. Trademark Law (the “Lanham Act”), which is commonly known as the disparagement clause, was facially unconstitutional under the First Amendment. Specifically, the Supreme Court found that a denial of registration of a mark under the disparagement clause of the Lanham Act, which prohibits registration of a mark that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead,” violates the Free Speech Clause of the First Amendment. The ruling, while rather shocking as to its reach, came as no surprise to the trademark community. This decision now casts a shadow on the remainder of what is called Section 2(a) and opens the door to further expansion of our understanding of speech.
This litigation began when Mr. Simon Shiao Tam, a humble guitar player in a band made up of Asian-American men that called itself The Slants, pushed to change the law. Mr. Tam’s fight began at the Trademark Office in 2010, when he filed an application to register the name of his band as a trademark. In 2011, Mr. Tam’s first application to register the band’s name as a trademark was denied under the disparagement clause. After Mr. Tam refiled a second application for the mark THE SLANTS and was rejected on the same grounds, he appealed the rejection to the Trademark Trial and Appeal Board, the Federal Circuit Court of Appeals, and ultimately the Supreme Court.
To understand the uphill battle that faced this single litigant, it is important to start with the actual wording used in the Trademark Office’s initial rejection. Mr. Tam’s application was rejected because the Trademark Office concluded that the “likely meaning” of the mark is “a negative term regarding the shape of the eyes of certain persons of Asian descent” and that because some sources indicated that the mark referred to “persons of Asian descent ... in a disparaging manner” and thus “is an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals.” In rejecting Mr. Tam’s initial appeal, the Trademark Trial and Appeal Board explained that because “[n]o conduct is proscribed, and no tangible form of expression is suppressed,” Mr. Tam’s “First Amendment rights would not be abridged by the refusal to register his mark.”
The Supreme Court’s unanimous 8-0 decision reversed over a century of legal precedent at the Trademark Office in finding that “trademarks are private, not government, speech” and that “powerful messages can sometimes be conveyed in just a few words.” Because of this, it is improper for the Trademark Office to refuse registrations on the grounds that they are disparaging or insulting. This ruling will have an immediate and wide-reaching impact as other marks deemed offensive can now be registered. Perhaps most notably, the Pro-Football, Inc. (the company that operates the Washington Redskins football team) appears poised to win its fifteen-year-long dispute over the mark REDSKINS, which has involved multiple court actions and proceedings before the Trademark Office. In 2014, the Trademark Office cancelled various registrations for this mark under the disparagement clause because the term was found to be offensive (although that decision has not been enforced, pending resolution of Pro-Football’s appeals). The Supreme Court’s decision rejection will now cause the rejection of the REDSKINS marks under the disparagement clause to be overturned.
Owners of trademarks considered to be offensive may not be the only beneficiaries of the Supreme Court’s decision. Although the Supreme Court expressly left open the question of how other provisions of the Lanham Act should be analyzed when free-speech challenges are raised, both the majority opinion and the two concurring opinions found that strict scrutiny applied in analyzing the disparagement clause because its application constitutes viewpoint discrimination. As explained in Justice Kennedy’s concurrence, “[a]t its most basic, the test for viewpoint discrimination is whether—within the relevant subject category—the government has singled out a subset of messages for disfavor based on the views expressed.” Thus, although the Supreme Court’s decision only explicitly addressed the disparagement clause, it also potentially calls into question the remainder of Section 2(a) of the Lanham Act, which excludes other types of marks beyond those that are disparaging. The text of Section 2(a) is reproduced below, with the portion the Court found unconstitutional underlined:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;
The remainder of Section 2(a) may be unable to survive a free-speech challenge under this rigorous constitutional scrutiny, including the prohibitions on registering: (a) immoral or scandalous marks; (b) marks that are deceptive; and (c) marks that falsely suggest a connection with someone or an institution, belief, or national symbol.
The first portion of Section 2(a) bars registration of marks that are found to be immoral or scandalous. The Trademark Office considers this portion of Section 2(a) to prohibit the registration of marks that are “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation” or are vulgar or “morally crude” based on the current attitudes of a substantial portion of the public at the time registration is sought. These rejections turn on the specific connotation of the wording used in a mark. As an example, hundreds of registrations have issued containing the word “suck,” including marks such as SUCK IT, CANCER and COLDS SUCK. The Trademark Office has found these to be acceptable expressions that are not immoral or scandalous under Section 2(a). In contrast, one applicant who wished to use the word “suck” with a sexual connotation in a mark to sell lollipops in combination with more graphic language was denied registration.
The Trademark Office has also prohibited the registration of marks containing vulgar or scandalous imagery. For example, the Trademark Office has previously rejected a logo for use on shirts that comprised an image of a dog defecating, as well as a design mark comprising a bottle in the shape of a closed hand with an upwardly extending middle finger.
The Supreme Court’s decision calls into question whether applicants are entitled to register such arguably scandalous or vulgar marks under the First Amendment. Other free-speech cases have consistently upheld one’s right to stand on a box and yell scandalous and immoral material.13 Today’s decision arguably prohibits the Trademark Office from rejecting marks solely on the basis that they are believed to be immoral or scandalous. Indeed, in holding the disparagement clause unconstitutional, the majority opinion expressly notes that “[s]peech may not be banned on the ground that it expresses ideas that offend”—which applies equally to vulgar trademarks as well as to those that are disparaging.
Section 2(a) prohibits the registration of any mark that contains a descriptive term that is found to be deceptive in the context of the goods or services with which it is used. This provision is based on the goal of protecting consumers. Deceptive marks are those that include terms that are deceptive with respect to the materials contained in a product (i.e., using the term GOLD in a mark used with jewelry that is not made of gold) as well as terms that are deceptive as to the place from which the goods or services originate (i.e., using the term CALIFORNIA as part of a mark for products made in Mexico).
This provision could potentially run afoul of the First Amendment, as it too could be considered viewpoint discrimination: the Trademark Office rejects a subset of applications based on the views expressed by the mark (which are believed to be deceptive).
Section 2(a) also prohibits registration of a mark that falsely suggests a connection with a particular person, institution, belief, or national symbol.
The prohibition on registering a mark that suggests a connection with a particular person is founded in an individual’s right to control the use of his or her identity or “persona.” An application to register a mark that suggests a connection with a particular person but that does not have that person’s consent must be rejected under Section 2(a). For example, an application to register the mark ELVIS.COM for use with brand development services was rejected under this section because the musician Elvis Presley did not consent to the registration.
Similarly, Section 2(a) prohibits registration of a mark that falsely suggests a connection with an institution, belief, or national symbol (such as a national flag).
However, the Supreme Court’s decision now calls this practice into question: does an applicant have a right under the First Amendment to use ELVIS.COM even without Elvis Presley’s consent? Are the constitutional rights of this applicant violated by the refusal?
Going Forward: The Trademark Office’s Ability to Reject Marks May Be Severely Curtailed
Previously, the Trademark Office relied on the disparagement clause to reject applications to register marks found to be insulting to individuals or groups. In the past, marks such as OREGON SUCKS or even DIVORCE LAWYERS SUCK have historically been rejected under the disparagement clause of Section 2(a) of the Lanham Act. The Supreme Court has clearly opened the door to the protection of these types of marks.
As is always the case with these First Amendment cases, the effects may be wide ranging. In this case, an Asian-American desired to use an expression for his own benefit. In the challenge to the registration of the mark REDSKINS, the situation was reversed, as Native Americans objected to the protection of this mark as disparaging while the owners wanting to use this expression were not members of the group who felt disparaged. Today’s decision suggests that extreme groups with controversial opinions can now secure even marks that include shocking, offensive, or vulgar wording or images. For example, could a nationalist group file and secure protection over a mark that includes the N-word under the guise of free speech? Could the Trademark Office deny registration of a logo containing explicit or pornographic imagery? It remains to be seen whether the notion that the Trademark Office simply cannot reject marks, even the most vile, will become the norm.