Essay: Freedom of speech and trademarks

In 2009, an Asian rock band called The Slants, was becoming very successful. The band was touring, selling out concerts, and getting good publicity. Seeing the future to be bright, the group decided to trademark their band name. The group expected this to be a very simple process. The band’s leader, Simon Tam, expected this to take approximately six months and cost around three hundred dollars. Unfortunately, what Simon Tam and his band members found out was that this seemingly simple application would turn into a six-year battle which we lead to the highest court in the land. This would become a Supreme Court case that would have far-reaching implications for years to come and would end up costing the band far more than the initial three hundred dollars.
 
The United States Supreme Court finally ruled on the case on June 19, 2017. The case, originally called Lee v. Tam, stated that a law prohibiting disparaging trademarks violates a citizen’s First Amendment right to freedom of Speech. On November 14, 2011, Simon Tam filed the instant application (App. No. 85/472,044) seeking to register the mark The Slants for “Entertainment in the nature of live performances by a musical band,” based on his use of the mark since 2006. Simon Tam claims that he named his Oregon-based rock band as a way to reclaim and take ownership of negative Asian stereotypes. The Patent and Trademark Office(PTO) disagreed with his assessment. The PTO denied his application, citing the Lanham Act as its justification. In its reply, the Patent and Trademark Office stated that the name of the band was offensive to Asian-Americans. The examiner found that the mark likely referred to people of Asian descent in a disparaging way, explaining that the term slants had “a long history of being used to deride and mock a physical feature” (Matel, 2017) of people of Asian descent. Even though Mr. Tam may have chosen the mark to “re-appropriate the disparaging term,” (Matel, 2017) the examiner found that a substantial composite of persons of Asian descent would find the term offensive. It is from this determination that Mr. Tam decided to appeal before the Federal Circuit.

The Lanham Act states that “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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.” (US Code, 2017)

The Federal Court’s main issue was determining whether or not the disparaging issue within the Lanham Act was unconstitutional and should be voided. Webster defines disparaging as “to lower in rank or reputation or to degrade.” (Webster, 2017) The case was originally named In Re Tam, 808 F.3d 1321 (Fed. Cir. 2015). In this case, Circuit Judge Moore concluded that the disparaging provision of the Lanham Act is unconstitutional for various reasons and that Mr. Tam should be granted trademark protection on The Slants.

It was the Federal Court’s ruling that the Lanham Act was viewpoint-based discrimination. Viewpoint discrimination is “the term the Supreme Court has used to identify government laws, rules, or decisions that favor or disfavor one or more opinions on a particular controversy. For example, a government official who permitted ‘pro-life’ proponents to speak on government property but banned ‘pro-choice’ proponents because of their views would be engaged in ‘viewpoint discrimination.’ Courts may also describe this constitutional requirement by saying that government laws and decisions must be ‘viewpoint neutral.’ In recent decades, viewpoint discrimination has been distinguished from content or subject matter discrimination, which involves government regulation of an entire topic or subject, such as abortion, war, or sexual speech, either by punishing those who use this kind of speech (such as obscenity) or by completely excluding the subject from discussion on particular government property or in public forums.” (Fallinger, 2012)

The court stated that by the government denied trademark protection to the Slant’s mark because of the message that the mark portrays. The government attempted to defend itself by saying that the government should be able to deny highly offensive images and sentiments. In reply, the Federal Circuit said that “When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint.” (Court of Appeals, 2016) The Federal Circuit proved its point by stating that the Patent and Trademark Office refused to register The Slants but has registered marks like “Asian Efficiency” and “Celebrasians”, which the court considered positive references. The Court found that the only difference between the two was the message that it portrayed. The Federal Court then ruled the disparaging provision is viewpoint discriminatory, and therefore is immediately unconstitutional.

As part of the alternative theory, the court found that “Section 2(a) did not pass the four part Central Hudson test for determining whether restrictions on commercial speech are constitutionally valid.” (Shone, 2015) The speech of private citizens is more protected than commercial speech. “The Central Hudson test uses a form of intermediate scrutiny, so it is less demanding than the strict scrutiny test for content or viewpoint discrimination. Yet the Court still found that the government failed to meet the second step of the test, the requirement of a substantial government interest. The entire interest of the government in § 2(a) depends on disapproval of the message. That is an insufficient interest to pass the test of intermediate scrutiny.” (Shone, 2015)

As part of its defense, the Government argued that the Lanham Act should be classified as Government Subsidy and the strict scrutiny requirement should not apply. Since users pay an application fee when submitting a trademark registration, taxpayer money does not fund the trademark registration process. Because of this, the Court decided that Government Subsidy exception did not apply.

The Patent and Trademark Office later appealed the Federal Court’s decision to the United States Supreme Court, asking “whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment?” (Robson, 2017) The Supreme Court agreed to hear the case in September, 2016. The case was heard on January 18, 2017. Then, on June 19, 2017, the Supreme Court ruled in favor of Tam. The majority opinion stated that “The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech.” (Robson, 2017)

There was one particular portion of the Supreme Court ruling that I found most interesting. In Justice Kennedy’s brief, he stated that “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.” (Robson, 2017) This seems to be saying that the government may not ban any form of speech strictly on the principle that the ideas expressed could be offensive. We live in a day where everything that we do could possibly be found to be offensive to someone. It is my opinion that this is the very reason that the First Amendment was created. In Judge Alito’s plurality opinion, he mentioned the previously trademarked phrases: “Down with racists,” “Down with sexists,” “Down with homophobes.” I am sure these phrases are offensive to someone, somewhere.

After the Supreme Court ruling, Tam issued the following statement on his website: “After an excruciating legal battle that has spanned nearly eight years, we’re beyond humbled and thrilled to have won this case at the Supreme Court. This journey has always been much bigger than our band: it’s been about the rights of all marginalized communities to determine what’s best for ourselves. During the fight, we found the Trademark Office justifying the denial of rights to people based on their race, religion, sexual orientation, and political views, simply because they disagreed with the message of these groups. To that end, they knowingly used false and misleading information, supported by questionable sources such as UrbanDictionary.com, while placing undue burdens on vulnerable communities and small business owners by forcing them into a lengthy, expensive, and biased appeals process. The Supreme Court has vindicated First Amendment rights not only for our The Slants, but all Americans who are fighting against paternal government policies that ultimately lead to viewpoint discrimination. (Tam, 2017)

This case should and will have a far-reaching impact. Most immediately, this case will likely pave the way for the Washington Redskins from the National Football League to get their trademark back. In the 2014 case, Pro-Football, Inc. v. Amanda Blackhorse et al, the Washington Redskins had six trademarks cancelled because the court considered the name to be disparaging to the Native American people. In 2014, the Federal Court upheld the lower court’s decision to disallow the trademark; however, when the Washington Redskins appealed to the Supreme Court, the decision was suspended pending the outcome of The Slants case.

These are not the only two examples of pending court cases. There are seventeen similar cases on court dockets across the United States. These cases range from Erik Brunetti and his attempt to trademark his colorfully named clothing line to the 1930s case over the name Madonna, which was denied because the Patent Office compared the name Madonna to the Biblical Virgin Mary. The Patent Office decided that trademarking name Madonna would have been disrespectful and offensive to Christians. The Patent Office seems to pick and choose what it deems as offensive. For example, it denied the registration for “Satan is a Republican” because it could be found as offensive to members of the Republican party; however, it approved the registration for “The Devil is a Democrat.” How is one more or less offensive than the other? I would argue that both should be approved in order to allow representatives from both parties the free speech that they deserve.

The disparagement clause has been in effect for seventy years. Although the patent office does not publish the number of trademark requests that it refuses each year, I would be curious to find out how many of the refused trademarks were refused due to them being found to be offensive. The United States Code also prohibits the trademarking matter that could be considered of immoral or scandalous. These do not choose a specific group. Instead, they seem to be aimed more toward the general public. The Supreme Court’s decision does not address this issue, which could provide the potential for the refusal of registrations in the future.

In reading many commentaries about the Supreme Court decision, many wondered if this decision would leave the Patent Office vulnerable to the future registration of highly offensive, immoral or scandalous marks. For example, “Ku Klux Klan” was refused registration in 2005. A person seeking to register the term “Coffee Nazi” was refused registration on 2014. It was stated that someone had submitted an application to register “Islamic Terrorists” earlier in 2017. While The Slants nor the Redskins seem to be terribly offensive to the general population, how well received would this outcome have been had the band been called “The Nazis?” I would guess that it would have generated an outcry from the public. Does this ruling by the Supreme Court open the door to that possibility? It most likely does, but I feel that it is my belief that the Patent Office does not have the right to impose their beliefs on others. Would the same ruling be applicable? Probably. Does denying these patents violate the right to free speech? If the ruling were to be explicitly followed, then I feel the answer to all of these questions is yes. I feel this opens the door to future cases in the opposite direction. When asked how he felt the outcome of his case would affect others, such as the Redskins case, he stated the he felt that his was different because he was seeking to make the name a positive image instead of a negative one. While I applaud the attempt to return what many had taken as a negative phrase and turn it into something positive, I do not agree with him that this case is different from any of the others that have been heard. At the core of all of these cases is the attempt to impede free speech. This is the common denominator between all of them.

There is a distinct problem with the current system. Currently, a government official decides whether a name that is pending registration is offensive based upon his own beliefs. When denied, the only recourse is to appeal to a board of additional government officials, who may have the same set of beliefs. The limitation has nothing to do with foul language or graphic sexual terminology, as the government permits these as part of the trademark process. The primary problem that I see with this issue is when personal preference influences whether a term is offensive or just clever and edgy. From a Lipscomb perspective, what would happen if a government official decided that a phrase like “Jesus Saves” was disparaging to non-Christians? Is this not giving government too much power? Several groups such as the ACLU, the Becket Fund, and the American Jewish Committee agreed with this opinion. There were nineteen groups in all who filed amicus briefs agreeing with Tam. They concurred that the restriction on registering disparaging names was unconstitutional. Each brief was written, not because they had something to gain by supporting Simon Tam, but rather as a way of reinforcing the notion the government should not be in the business of squelching every American’s right to free speech.

The interesting part about this case is that the denied trademark registration did not require that The Slants stop using the band name exclusively, nor did it prevent him from stopping others from using the name if he wanted to. It simply prevented him from receiving the benefits of the federal registration. Tam’s lawyer even argued this point in court. He specifically stated that The Slants don’t need to register their name in order to use it. Nevertheless, trademark registration is “an important benefit conferring valuable rights. A rule barring access to that benefit based on the message conveyed by a given trademark requires heightened constitutional scrutiny. The government cannot show that the burden imposed here on respondent’s speech passes the requisite scrutiny.” (Court of Appeals, 2016) The same can be said for the Washington Redskins. Nothing in the revocation of their trademark prevents them from continuing to use the name, nor stop them from preventing others from using their name on promotional materials. “Registration provides nationwide notice of ownership of the trademark as of its registration date and prevents others from registering confusingly similar trademarks. It also serves as evidence of the validity and exclusive ownership of the mark, with heightened protection after five years and the possibility of becoming incontestable. And registration grants substantial monetary remedies not otherwise available to owners of unregistered (or common law) trademarks, including certain statutory damages against counterfeiters.” (Nelles, 2017)

I feel that this is not the end of the questions concerning this case and others like it. Additional questions must be answered. One such question would be whether Simon Tam’s right to register his trademark overrides the general public’s right to use the same words he is trying to register? Further, if no one is stopping the public from using these offensive words, why was it so important that the government stop Tam and others like him from officially registering these words? If the federal government can refuse trademark registration that it deems offensive, can this be taken to the state and local level as well? Could a state school refuse to recognize a group that it perceives as contrary to its school policies? At the University of Tennessee, a group comes yearly to protests abortion. They spend a weekend protesting, calling the act of abortion modern day genocide. Do they have the right to do such a thing in a public place? More to the point, do they have the right to do this on a state university? While it is a controversial modern issue, they regularly display graphic photos and expresses non-related comparisons that offend many. At what point does the government have the right to impede free speech, given that the first amendment allows for it? I would say that the government has already answered this question with the First Amendment.

Trademarks are protected speech. A trademarked name, word, phrase, logo, or design can do far more than inform customers or denote origin. Registered trademarks can vary from one polar end to the other. Here are just a few examples:

• TEA PARTY PATRIOTS political organization

• MAKE AMERICA GREAT AGAIN slogan

• CATHOLICS FOR CHOICE advocacy group

• THAT’S SO GAY news sites

• LEGALIZE ACID accessories

• HONKEY KONG band shirts

These examples are vastly different. Each can be found to be offensive to a specific group. Each serves to contradicts the government’s argument. I feel that government should not be enabled to censor speech in any way. I feel this is the core of what this case was truly about. To quote the First Amendment, “Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievances.” (Staff, 2017) The First Amendment guarantees freedoms concerning religion, expression, assembly, and the right to petition. It seems to me that the system is designed to promote limiting free speech since the board that is governing the Patent Office is another set of people with a pre-disposition for bias. In my opinion, the Supreme Court ruling is the only way to truly prevent the unfair and prejudicial disparity of others; however, it cannot stop with Simon Tam’s case. It must apply to all such cases, regardless of personal beliefs. The Supreme Court stated as much in their findings. Supreme Court Justice Alito stated that ““the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’” (Matel, 2017) If we, as a society, allow the personal beliefs of one group to destroy the free speech of others who do not conform or agree with them, we are no better than those dictators who have come before us attempting to control society’s opinions. Freedom of speech should always be protected. Thank goodness the Supreme Court agrees.

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