What do the Redskins, The Slants, and the ACLU have in common? Citing the First Amendment, they say free speech trumps the Government’s efforts to ban offensive trademarks. They advocate for the rights of intellectual property owners, specifically trademark rights, for everyone who uses a mark in commerce. Even obnoxious marks.
On the opposite side, the Government argued for affirmance of the U.S. Patent and Trademark Office’s decision rejecting The Slants’ application as disparaging.
Today, in In re Tam, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, struck as unconstitutional the relevant part of Section 2(a) of the Lanham Act, which permits the Government to deny registration of trademarks deemed “disparaging.”
It is rude to call people Slants
Does the mark “The Slants” disparage Asians? Yes! The mark is highly obnoxious. And the Federal Circuit has so held, first in a panel decision, and now en banc.
The band by that name, The Slants, earnestly has sought and now finally will obtain federal registration of the mark that everyone agrees is obnoxious.
Why should this wrong be permitted? Because the good of free speech triumphs over the harm of offensiveness.
Free speech trumps offensiveness
In Tam, the Federal Circuit begins with a good, thorough discussion of the nature and purpose of trademarks, which are intended to protect consumers from confusion, and which are considered property of the trademark owners. Even an offensive trademark tells consumers something about the product and its origin. If consumers don’t like the message, they don’t have to buy the product. In any case, under trademark law, the owner of a mark should be permitted to stop others from using the same mark for the same goods sold in the same channel of commerce.
Consumers judge trademarks
The Federal Circuit rejected the Government’s argument that Section 2(a) of the Lanham Act merely controls “commercial speech,” which is given a lesser degree of protection than, say, religious speech. The Court held that the Government was impermissibly seeking to stop “expression,” and that that is almost always going too far, even in commercial cases.
The Court also rejected the Government’s argument that registration of “The Slants” would recruit the Government into being an advocate for the offensive, disparaging message conveyed by the mark. Instead, reasoned the Court, a registration is merely an indication that a mark is being used in commerce, not an endorsement of the message of the trademark owner.
The Federal Circuit observes that to leave it the U.S. Patent and Trademark Office to decide which marks are disparaging, and which are not, would be highly subjective. Property rights, and more importantly free speech, should not be throttled on subjective grounds. That would be unfair. It would be unpredictable. And it would vary from one year to the next depending on the whims of popular thinking.
Registration should be decided objectively
All together, the Court’s 12 judges have issued 110 pages of opinions, with the majority opinion alone taking 62 pages. Nine of the judges joined the majority, while there also are a variety of combinations of concurrences and dissents.
In upholding The Slants’ registration, the Federal Circuit also essentially ordered the U.S. Patent and Trademark Office to restore registrations of the Redskins and many other trademarks, some of which are extremely obnoxious, slamming, for example, major political parties and major religions.
The Federal Circuit’s decision in Tam is wise: It is better for the Government to allow people to exercise free speech, even if disparaging, than to subjectively deny registration of marks that it deems offensive.
Will Supreme Court take this case?
Meanwhile, the U.S. Court of Appeals for the Fourth Circuit is expected to take up another, related case involving the Redskins trademark. It is possible that a conflict between circuits might arise. While anything is possible, courts usually strive to avoid conflicts.
The odds are strongly against the Supreme Court taking up any given case on certiorari. From today’s vantage point, the possibility of an inter-circuit conflict involving Constitutional law, especially free speech, combined with a hot issue of intellectual property law, makes Tam a better candidate for certiorari than most.
Happy ending for a rude name
Today’s decision in Tam marks the confluence of free speech and intellectual property rights.