Political Correctness: A 21st Century Stronghold Now Under Siege by Trademarks

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Authored by Davide Schiavetti

The scene is set. Your mark is judged as disparaging. Can the Examining Attorney reject it? Fear not, because the Supreme Court in Tam cried: “Free Speech!” In recent years, the delimitation between First Amendment rights and trademark protection has resulted in repeated clashes, with inconsistent applications of the disparagement clause in Section 2(A) of the Lanham Act. As a result, it was little surprise that earlier this year the Supreme Court granted certiorari to consider whether the provision that bars registration of disparaging marks is facially unconstitutional, and to provide clearer guidelines to the US Patent and Trademark Office.

In 2011, Simon Tam filed an application with the US Patent and Trademark Office (USPTO) to register the mark “THE SLANTS” for his rock band. Tam and his band were aware of the controversial nature of this term (“slant” being a derogatory epithet used to refer to persons of Asian ancestry), but they, as advocates and role models in the Asian American community, had hoped to reclaim the insult to empower their community – much like other marginalized groups have done before them. Unfortunately, their hopes turned out to be in vain as the USPTO subsequently rejected their application.

In response to Tam’s challenge, the government advanced several reasons as to why the disparagement clause does not – in their opinion - violate the protection of free speech under the First Amendment. First, it contended that trademarks constitute government speech and therefore fall outside the umbrella of the First Amendment. To persuade the justices, the government relied on the Walker v. Texas Division case, wherein a greatly divided court rendered a 5-4 decision finding constitutional a law that denied the use of confederate flags on specialty license plates. Interestingly, the dissenters in the Walker case constituted the majority in Tam, affording them an opportunity to curb the use of this doctrine, and declare that the Walker case delineates the “outer bounds of the government speech doctrine”, rather than its touchstone. In fact, in Tam, the court unanimously rejected the government’s argument because, they found,  the USPTO does not independently edit or cancel marks, lacking the intentionality and consistency of message sufficient to be considered government speech.  On this, Justice Alito observed: “if the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”

The USPTO also argued that trademarks can be compared to similar “government programs that subsidize speech expressing a particular viewpoint.” The court noted, however, that all the cases advanced by the government involved the government’s payment of cash subsidies or their equivalent, which is antithetical to the fee system in place for the registration of trademarks, where it is the applicant who pays fees to file and maintain the registration.

Finally, the government insisted that – ultimately - the function of trademarks is to identify goods and services “emanating from a particular commercial source”, which classifies them as commercial speech and in turn grants limited First Amendment protection. True, trademarks are undoubtedly strictly intertwined with commercial activity, but – even if trademarks were considered to be commercial speech - the issue is whether the disparagement clause could withstand the appropriate constitutional test. Specifically, restrictions on commercial speech must serve a “substantial interest” and be “narrowly drawn”. The USPTO contended that the first interest the clause advances is preventing underrepresented groups from exposure to demeaning messages in advertisement. The court clarified that the First Amendment however, protects speech that may be considered hateful just as strongly as any other speech. Then, the government explained that the “orderly flow of commerce” would be detrimentally affected by discriminatory conduct. Again, the court did not receive the argument and held that the disparagement clause is sufficiently broad to deny registration even to marks that oppose discrimination, rendering the government’s argument moot.

Surprisingly, while the Court was unanimous (8-0) in reaching its decision, it was split in half as to the reasoning. Justices Kennedy, Ginsburg, Sotomayor and Kagan believed that the disparagement clause constituted viewpoint discrimination and is subject to rigorous constitutional analysis, which rendered consideration of any of the parties’ constitutional argument unnecessary. On the other hand, Justices Alito, Roberts, Thomas and Breyer agreed that trademark laws must at least survive Central Hudson’s intermediate-scrutiny analysis. But the disparagement clause failed that test too.

By striking down the disparagement clause, the Court not only left free speech advocates and Simon Tam cheering, but also REDSKINS fans, who will see the fight against cancellation of their team’s marks supported by a much stronger argument. Trademark litigants too, thanks to Tam, will now be in a better position to experiment and raise constitutional challenges to trademark law doctrines.

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