SCOTUS Affirmed the refusal to register disparaging trademarks by USPTO as unlawful and violative of First Amendment

SCOTUS Affirmed the refusal to register disparaging trademarks by USPTO as unlawful and violative of First Amendment . Held that relevant provision under Section 2(a) of the Lanham Act is unconstitutional and violates the Free Speech Clause of the First Amendment.

Supreme Court of the United States in its judgement in Joseph Matal, Interim Director, United States Patent and Trademark Office, Petitioner V. Simon Shiao Tam 582 U. S. 2017 No. 15-1293 dated June 19, 2017 affirmed the decision of the Federal Circuit that the disparagement clause violates the Free Speech Clause of the First Amendment.

Background:

“THE SLANTS” was applied as Trademark by Tam, Simon Shiao for “Entertainment in the nature of live performances by a musical band” seeking registration in International Class 41 on November 14, 2011 with a claim that mark is in use since November 15, 2006.

United States Patent and Trademark Office refused to register the Trademark on January 06, 2012 as not registrable under Trademark Act Section 2(a)

The Trademark Examiner observed in refusal as: “The likely meaning of “THE SLANTS” to be a negative term regarding the shape of the eyes of certain persons of Asian descent. ..This refers to “persons of Asian descent” in a disparaging manner because it is an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals. … “Slant Eyes, Almond Eyes, What’s in those Chinese Eyes?”. The term “slants” and the full equivalent “slant-eyes” has long been a derogatory term directed towards those of Asian descent.  The etymology of the term suggests that its use became prevalent during the various wars of the 20th century, starting with World War II and increasing in use in the Vietnam war as a term to deride and mock the citizens of the countries at war with the United States and those of Asian descent in general.”

This refusal was made final by USPTO - United States Patent and Trademark Office and the applicant filed appeal on December 10, 2012.

Before the Board applicant based his case mainly on the grounds that “1) the proposed mark is not inherently disparaging and there are no additional elements to make it so, and 2) there is nothing about the services that make it disparaging 3) First Amendment rights of the applicant”

The appeal was decided by USTTAB - United States Trademark Trial and Appellate Board on September 26, 2013 and USPTO refusal to register under section 2(a) was affirmed by the Board.

It was held by the Board: "The dictionary definitions, reference works and all other evidence unanimously categorize the word “slant,” when meaning a person of Asian descent, as disparaging. Moreover, the record includes evidence of individuals and groups in the Asian community objecting to use of the term in the context of applicant’s band.

On the First Amendment rights of the applicant the Board observed as: “We emphasize that this decision only pertains to applicant’s right to register the term and “it is clear that the PTO’s refusal to register [applicant’s] mark does not affect [his] right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, [applicant’s] First  Amendment rights would not be abridged by the refusal to register [his] mark.”

The applicant appealed before the United States Court of Appeals for the Federal Circuit arguing that the Board erred in finding the mark disparaging and that § 2(a) is unconstitutional. The United States Court of Appeals for the Federal Circuit vide order dated December 22, 2015 In Re Simon Shiao Tam Appeal No.  2014-1203 set aside the refusal and allowed the mark for the registration. The Court of Appeal for the Federal Circuit heard the case en banc and held the provision of the Lanham Act relating to refusal of registration of disparaging trademarks as violative of the First Amendment.

On April 20, 2016 United States Patent and Trademark Office  filed appeal before Supreme Court of the United States and on June 19, 2017 SCOTUS decided In Re Matal, Interim Director, United States Patent and Trademark Office V. Tam and affirmed the United States Court of Appeals for the Federal Circuit judgment.

The most relevant and important excerpts from the judgement In Re Matal, Interim Director, United States Patent and Trademark Office V. Tam are as below:

“We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.

The Lanham Act contains provisions that bar certain trademarks from the principal register. For example, a trademark cannot be registered if it is “merely descriptive or deceptively misdescriptive” of goods, §1052(e)(1), or if it is so similar to an already registered trademark or trade name that it is “likely . . . to cause confusion, or to cause mistake, or to deceive,” §1052(d). At issue in this case is one such provision, which we will call “the disparagement clause.” This provision prohibits the registration of a trademark “which may disparage . . . persons,  institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” §1052(a).2 This clause appeared in the original Lanham Act and has remained the same to this day.

The Government contends (1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine.

A The First Amendment prohibits Congress and other government entities and actors from “abridging the freedom of speech”; the First Amendment does not say that Congress and other government entities must abridge their own ability to speak freely. And our cases recognize that “the Free Speech Clause . . . does not regulate government speech.”

The Government’s own speech . . . is exempt from First Amendment scrutiny... The First Amendment forbids the government to regulate speech in ways that favor some viewpoints or ideas at the expense of others …..but imposing a requirement of viewpoint-neutrality on government speech would be paralyzing. When a government entity embarks on a course of action, it necessarily takes a particular viewpoint and rejects others. The Free Speech Clause does not re- quire government to maintain viewpoint neutrality when its officers and employees speak about that venture.

Here is a simple example. During the Second World War, the Federal Government produced and distributed millions of posters to promote the war effort. There were posters urging enlistment, the purchase of war bonds, and the conservation of scarce resources.  These posters expressed a viewpoint, but the First Amendment did not demand that the Government balance the message of these posters by producing and distributing posters encouraging Americans to refrain from engaging in these activities.

At issue here is the content of trademarks that are registered by the PTO, an arm of the Federal Government. The Federal Government does not dream up these marks, and it does not edit marks submitted for registration.Except as required by the statute involved here…an examiner may not reject a mark based on the viewpoint that it appears to express. Thus, unless that section is thought to apply, an examiner does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy or whether any such viewpoint is consistent with that expressed by other marks already on the principal register. Instead, if the mark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory.  (requiring that“[n]o trademark . . . shall be refused registration on the principal register on account of its nature unless” it falls within an enumerated statutory exception). And if an examiner finds that a mark is eligible for placement on the principal register, that decision is not reviewed by any higher official unless the registration is challenged. See §§1062(a), 1071; 37 CFR §41.31(a) (2016). Moreover, once a mark is registered, the PTO is not authorized to remove it from the register unless a party moves for cancellation, the registration expires, or the Federal Trade Commission initiates proceedings based on certain grounds.

In light of all this, it is far-fetched to suggest that the content of a registered mark is government speech…..For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony),10 “Think different” (Apple),11 “Just do it” (Nike),12 or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “End Time Ministries” ..The PTO has made it clear that registration does not constitute approval of a mark. …None of our government speech cases even remotely supports the idea that registered trademarks are government speech....Trademarks share none of these characteristics. Trademarks have not traditionally been used to convey a Government message. ...In sum, the federal registration of trademarks is vastly different from the beef ads in Johanns, the monuments in Summum, and even the specialty license plates in Walker. Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine.For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.

Perhaps the most worrisome implication of the Government’s argument concerns the system of copyright registration. If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?

The Government attempts to distinguish copyright on the ground that it is “‘the engine of free expression….but as this case illustrates, trademarks often have an expressive content. Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words.

Trademarks are private, not government, speech.....We have said time and again that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Street v.New York, 394 U. S. 576, 592 (1969). See also Texas v. Johnson, 491 U. S. 397, 414 (1989) (“If there is a bedrock principle underlying the First Amendment, it is that thegovernment may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable”); Hustler Magazine, Inc. v. Falwell, 485 U. S. 46, 55–56 (1988); Coates v. Cincinnati, 402 U. S. 611, 615 (1971); Bachellar v. Maryland, 397 U. S. 564, 567 (1970); Tinker v. Des Moines Independent Community School Dist., 393 U. S. 503, 509–514 (1969); Cox v. Louisiana, 379 U.S. 536, 551 (1965); Edwards v. South Carolina, 372 U. S. 229, 237–238 (1963); Terminiello v. Chicago, 337 U. S. 1, 4–5 (1949); Cantwell v. Connecticut, 310 U. S. 296, 311 (1940); Schneider v. State (Town of Irvington), 308 U. S. 147, 161 (1939); De Jonge v. Oregon, 299 U. S. 353, 365 (1937).

For this reason, the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.

We must confront a dispute between the parties on the question whether trademarks are commercial speech and are thus subject to the relaxed scrutiny outlined in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N. Y., 447 U. S. 557 (1980). The Government and amici supporting its position argue that all

A simple answer to this argument is that the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.

The clause is far too broad in other ways as well. The clause protects every person as well as every institution. Is it conceivable that commerce would be disrupted by a trademark saying: “James Buchanan was a disastrous president” or “Slavery is an evil institution”?

There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.

For these reasons, we hold that the disparagement clause violates the Free Speech Clause of the First Amendment. The judgment of the Federal Circuit is affirmed."

Writer is Managing Partner Intellectual Property Logium