Two cases making their way through the Federal courts may force the Supreme Court to consider the issue of what sorts of trademarks should be considered “disparaging,” and whether the government may lawfully prevent the registration of such trademarks. Currently, the Federal Lanham Act Section 2(a) allows the United States Patent and Trademark Office (“USPTO”) to refuse to register any mark that “[c]onsists 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 first case, In re Tam, involves Simon Tam, an Asian-American member of rock band The Slants, who was refused registration for the mark THE SLANTS on the basis that it is disparaging to people of Asian-American descent. In 2013, the Trademark Trial and Appeal Board (“TTAB”) affirmed the refusal in In re Tam, 108 U.S.P.Q.2d 1305 (T.T.A.B. Sept. 26, 2013). Tam appealed to the U.S. Court of Appeals for the Federal Circuit, contending that the TTAB erred in finding the mark THE SLANTS disparaging and also challenged the constitutionality of Section 2(a). The Federal Circuit rejected Tam’s arguments, but also requested, sua sponte, en banc review by the entire Federal Circuit. On December 22, 2015, the Federal Circuit en banc issued its landmark ruling finding Section 2(a) unconstitutional because it violates the First Amendment. See In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), as corrected (Feb 11, 2016).
On March 8, 2016, Tam requested that the Director of the USPTO comply with the Federal Circuit’s ruling. The USPTO responded it would not proceed with additional proceedings until its United States Supreme Court appellate rights had been exhausted. Tam filed a petition for a writ of mandamus in response, asking the Federal Circuit to order the USPTO to comply with its December 2015 ruling. The Federal Circuit denied Tam’s request, finding that, because the USPTO has not exhausted its appellate rights, it was not an abuse of discretion for the USPTO Director not to act on the Federal Circuit’s order. The USPTO filed for certiorari and appeal to the United States Supreme Court on April 20, 2016.
The second case, Blackhorse et al. v. Pro-Football Inc., was filed by Native American tribe members before the TTAB as a petition to cancel the Washington Redskins NFL franchise’s REDSKINS trademarks. That petition resulted in a 2014 TTAB order cancelling those trademarks, because they consisted of matter that “may disparage” Native Americans and bring them into contempt or disrepute. The Redskins appealed the decision to the Eastern District of Virginia, challenging the constitutionality of Section 2(a) and the disparagement finding by the TTAB. However, the Eastern District of Virginia found that Section 2(a) did not implicate the First Amendment, because a trademark registration is government speech, and upheld the TTAB order finding the name disparaged Native Americans. The Redskins appealed to the Fourth Circuit in August 2015 and the parties’ and amici briefs have been rolling ever since. As of April 25, 2016, the Redskins have petitioned the United States Supreme Court to review their case, skipping over the Fourth Circuit Court of Appeal.
The legal issues involved in the two cases overlap significantly, and the community is waiting to see whether the Fourth Circuit is going to elect to follow the Federal Circuit’s decision and find Section 2(a) unconstitutional. If they do not, the circuit split will almost certainly wind up before the Supreme Court.
Is the Government Speaking when it Registers a Trademark?
As a threshold matter, the Fourth Circuit in Blackhorse will need to consider the Eastern District of Virginia’s decision that Section 2(a) is exempt from First Amendment scrutiny, because a trademark registration is government speech. In In re Tam, the Federal Circuit rejected the argument that trademark registration is government speech, because trademark registration (e.g., the issuance of registration certificates) is a regulatory activity that does not convert the underlying speech to government speech.
In Blackhorse, the district court held that registering a trademark constitutes speech on the part of the government under the Supreme Court’s recent holding in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015). There, the State of Texas had a specialty license plate program but refused a design that would incorporate the Confederate flag. The Supreme Court held that the license plate program was government speech, because (1) license plates have a long history of communicating messages from the state, (2) the public closely associates official state license plate designs with the state, and (3) Texas maintained “direct control” over the message conveyed on the plates by actively exercising its authority to reject designs.
In reviewing these factors, the district court in Blackhorse found that all three factors favored finding trademark registration was government speech, because (1) the federal trademark registration program communicates a message of federal government approval, (2) the public closely associates the trademark registration symbol, ®, as a manifestation of the federal government’s recognition of a mark, and (3) the PTO actively and consistently exercises editorial control over the federal trademark registration program.
While the Fourth Circuit, if it hears the case, does not have to follow the Federal Circuit on this issue, it will certainly have to contend with it. If the Fourth Circuit affirms the district court on its decision here, that will set up a direct circuit split. If the Supreme Court takes the case now, then both cases will be considered.
Strict Scrutiny vs. Intermediate Scrutiny
Assuming the Fourth Circuit or the Supreme Court does not find Section 2(a) to be government speech, then either court will need to grapple with whether that provision is unconstitutional and what level of First Amendment scrutiny is appropriate for that analysis. The Federal Circuit in In re Tam has already decided the provision is unconstitutional under either intermediate or strict scrutiny.
On December 22, 2015, the en banc Federal Circuit ruled 9-3 that the disparagement provision of Section 2(a) is unconstitutional and “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.” The Federal Circuit found this provision unconstitutional under both a strict scrutiny and intermediate scrutiny review.
The guarantees of free speech afforded by the First Amendment, while far-reaching, are not absolute. In order to determine whether a government regulation on free speech is constitutional, the courts have developed a number of tests to interpret the First Amendment including strict scrutiny and intermediate scrutiny review.
Strict scrutiny review is used when restrictions on free speech are content- or viewpoint-based and directed toward expressive components of speech. Under a strict scrutiny review, the government regulation is presumptively unconstitutional and can only be justified if the government can prove that the regulation is narrowly tailored to serve compelling state interests.
Under the more lax intermediate scrutiny review, a restriction on commercial speech is unconstitutional when that restriction (1) concerns lawful activity and is not misleading, (2) the governmental interest is not substantial, (3) the regulation does not directly advance the governmental interest, and (4) it is not narrowly tailored to serve that interest. Under this review, it is the government’s burden to justify its restriction on commercial speech.
In In re Tam, the Federal Circuit concluded that the disparagement provision of Section 2(a) precluding registration of disparaging marks constitutes a content- or viewpoint-based regulation aimed at expressive speech (not commercial speech) and, therefore, was subject to strict scrutiny.
The Federal Circuit reasoned that, although trademarks may have commercial components, the disparagement provision here was directed to the expressive component of THE SLANTS mark (i.e., its political or social message related to race). Since the government provided no defense that Section 2(a) withstands strict scrutiny, Section 2(a) was found unconstitutional under this review.
The Federal Circuit also held that, even if intermediate scrutiny where to apply, Section 2(a) is still unconstitutional, because “[t]here is nothing illegal or misleading about a disparaging trademark like Mr. Tam’s mark,” and because the interest of disapproving of the content of a message is an insufficient governmental interest.
The Redskins franchise must have been thrilled when the decision in In re Tam came down, as this is precisely what they will be arguing at the Fourth Circuit—that, under either strict or intermediate scrutiny, Section 2(a)’s provision for the Patent and Trademark Office to decide whether its mark is “disparaging” is a decision based solely on the content of the mark, and such content-based restrictions are an unconstitutional restriction on free speech.
Are the Marks Disparaging?
Even after determining what level of scrutiny to apply and whether to follow the Federal Circuit’s In re Tam decision, the Fourth Circuit might still then reach the question of whether the REDSKINS marks are disparaging. This is probably the most sensitive aspect of these cases, as it involves determining exactly how, and for whom, the marks are disparaging. For its part, the Eastern District of Virginia decision in Blackhorse held that the marks “may disparage” a substantial composite of Native Americans based on 1) dictionary entries referring to the term as “contemptuous” or “offensive;” 2) scholarly, literary, and media references to the term being objectionable; and 3) statements of native individuals and groups that the term was offensive.
On appeal, the team’s briefing argues that the district court erred in using “may disparage” as the standard. The team contends that the court must find that the mark actually disparages the group. The team also argued that the district court erred in weighing the evidence and deciding the issue in Blackhorse’s favor. Because the issue was presented in the form of a motion for summary judgment, the relevant standard to apply was that there is no genuine issue of material fact as to the marks being disparaging.
A Proposed Compromise Forward
While we wait for the Supreme Court to potentially weigh in on the constitutionality of the disparagement provision of Section 2(a), we would like to offer a compromise viewpoint. It just might be possible to differentiate between the Slants and Redskins cases based on the expressive versus commercial nature of the marks and appropriate levels of review.
If one concludes that federal registration of a trademark constitutes private speech that should be protected, even though registration does not impact use of the mark, then where that government regulation is aimed at expressive marks, strict scrutiny should apply. Whether a mark is expressive could be determined by looking at a number of different factors, including, for example, whether the mark is to be used with creative goods or services. Within that context, the mark could carry an expressive message, in addition to functioning as a mark to identify source. Mr. Tam argued that his band’s use of the term “slants” amounted to re-appropriation of an offensive term by the Asian American community. Thus, the use of SLANTS as a band name appeared to carry both source identification and an expressive statement.
For solely commercial marks, intermediate scrutiny should apply. The majority of the marks applied for at the USPTO should fall under this category, since the primary purpose of a mark is to identify the source of the product or service. While trademarks may be associated with the qualities the brand owner uses in order to sell a product, this is not the same as the type of expressive speech that is at the highest level of protection. Rather, it is marketing messaging not political or social commentary.
It may be difficult for the Redskins franchise to argue that their use of the term “redskins” is expressive speech. Their primary argument is likely that the mark has come to be associated with their football franchise and is valuable in light of the goodwill associated with their commercial endeavor, not because they are making a political or social statement in combination with their identifying the source of their goods and services.
This approach could allow for a situation where restraints on disparaging, expressive marks analyzed under strict scrutiny are unconstitutional, while refusing federal registration of marks on the grounds that they are disparaging, but predominantly commercial, would be constitutional.
 The Federal Circuit decision also found that Section 2(a) does not implicate the First Amendment because refusing to register a mark does not prevent or burden any actual speech. That argument is outside the scope of this article.