September 30, 2016

On September 29, 2016, the United States Supreme Court granted certiorari in the matter of Lee v. Tam, regarding whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment, particularly whether it restricts free speech. This is the appeal from the same case I wrote about last December. I am curious to see how the Supreme Court tackles this issue, and what I consider substantive errors in analysis made by the Federal Circuit last fall.

Nevertheless, while the legal issues are heavily nuanced and regard convoluted topics such as “chilling effects,” “government speech” versus “commercial speech,” “disparagement,” and what constitutes “use in commerce,” it appears the layperson is confused by the scope of the case. Particularly, after the news broke yesterday, the common theme was “why is a musical group not allowed to call itself the Slants?” – which is not only wholly irrelevant to the issue but is also a dangerous interpretation of what I consider to be an important trademark matter.

In short, you can name your rock band whatever you want. You can also name your professional football team whatever you want (looking at you, Washington Redskins). No one is going to stop you. The United States Patent and Trademark Office, however, may refuse to grant you a trademark registration for such a name. Not that the name cannot be a trademark – it can be – but “registration” confers additional benefits that may or may not extend to marks that the USPTO considers to be “disparaging” of people or groups. This is the entirety of what the Supreme Court is going to address.

Instead, here I will try to address the distinction between free speech, trademarks, and trademark registrations in general terms.

What Is This Case About?

Contrary to a lot of media coverage, the Supreme Court is not going to address whether the Washington Redskins name and trademark is “disparaging” to native Americans. The organization did have trademark registrations for WASHINGTON REDSKINS cancelled by a U.S. district court in 2015. The Redskins also appealed that decision directly to the Supreme Court. The Court, however, has not taken that case. At least not yet.

Instead, this case regards the claims of an individual named Simon Tam, who is the front-man for an Asian-American musical group (“dance-rock band”) he calls the Slants. Mr. Tam sought to obtain a trademark registration for THE SLANTS through the USPTO. His application was denied on grounds that the term is disparaging and is a pejorative term or slur among a significant portion of the relevant population. This is derived from Section 2(a) of the Lanham Act.[1] Mr. Tam has challenged this ruling because he claims that he is using the Slants as a name to “reclaim” ownership of the term as a means of overcoming the prior historical negative connotations associated with it, to the extent there are any such connotations.

Why Do We Care?

In my discussions of this case and the issue with non-lawyers and legal scholars, there are a series of common questions I am asked in return. Particularly: “what is the big deal? Freedom of speech should let him use whatever name he wants.”

This is absolutely true. Mr. Tam can call his band the Slants. No one is stopping him from using that term. He appears to be the first to use the name in association with music or musical performance, which means there is no one else with senior user status. The First Amendment absolutely precludes the government from issuing any law requiring Mr. Tam (or anyone else) to refrain from calling a musical group the Slants. Even if this name were to offend everyone, the First Amendment sides with Mr. Tam and his fellow band members. They can use this name to identify themselves as a musical group, at least in the United States. This is not in dispute in any context at all. Mr. Tam, however, wants more.

Mr. Tam wants a trademark registration for THE SLANTS.

Now you see the dilemma. Or maybe not?

Trademark versus Trademark Registration

Trademarks under Common Law

A “trademark” under United States law “protect[s] words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods.”[2] Thus, any word or phrase or logo or symbol that helps to identify the owner or maker of a particular source of goods and services is a trademark. Trademarks are source identifiers. In essence, that is all trademarks are.

The really cool thing about trademarks is that there is no “process” for obtaining a trademark. The moment a word, phrase, logo, or symbol is used in association with a product or service – it is immediately a trademark. There is no waiting period. There is no gradual build-up to acquire trademark rights. Common law trademark rights attach immediately. Notably, this is why I am averse to the use of “trademark” as a verb – for the legal implications of the word are binary. Either something is a trademark or it is not. It is entirely dependent on whether the mark is used as a source identifier.

Accordingly, Mr. Tam has a trademark for THE SLANTS. Today. Right now. As we speak, Mr. Tam is the owner of trademark rights to that name. Yes, he really is. The Supreme Court is not gathering to decide whether THE SLANTS is a trademark. I promise.

For example, we know that the Washington Redskins trademark registrations were cancelled last year. But if today, you named a professional sports team the Redskins, Daniel Snyder would sue you for trademark infringement. He would also win. Sorry, Eric Cartman.

Trademark Registrations and Legal Rights

What are we fighting about then? It is simple. It is over Mr. Tam’s alleged right to registration of his trademark by the USPTO. While Mr. Tam has common law rights to THE SLANTS, were he to acquire a federal trademark registration, he would gain additional legal rights and presumptions under U.S. law. The Lanham Act is a statute that in part addresses the scope of trademark rights and seeks to “protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get.”[3] Additionally, where Mr. Tam is concerned, the Lanham Act exists to “ensure[] that a markholder can protect ‘his investment from … misappropriation by pirates and cheats’.”[4]

The Lanham Act therefore provides certain trademark owners with additional rights and protections. This includes the following: exclusive nationwide use of that mark; presumptions of validity in court; the right to have the mark be deemed incontestable after five years of use; the right to sue for infringement in federal court; the rights to receive additional damages from willful infringement; the right to prevent counterfeit goods from importation; and potential international rights and recognitions for use of the mark. These are rights and benefits not afforded other trademark owners that may lack federal registrations. This is the impetus for Mr. Tam’s desire to acquire a registration.

Is this all making sense now? Trademarks are not the same as trademark registrations. And words are not necessarily trademarks, though they can be.

Why is “freedom of speech” even a consideration in trademark law then? Why is the Supreme Court bothering to address these two things that may not overlap? Ah, now we have reached the crux of the issue.

Freedom of Speech and Trademark Law

The First Amendment states unequivocally that “Congress shall make no law … abridging the freedom of speech.” Yet we also know that “free speech” is not absolute or without limits. This is the subtle key to the entire dispute. Where can the government draw the line?

Private Speech

When you and I make public statements as individuals, this is classified as “private speech.” For legal purposes, this is treated differently than “commercial” speech. There is a third category known as “government” speech as well. Private speech is the least restricted category, essentially precluding only individual speech that incites riots or threatens the President and national security. Things of that nature. Almost anything else that is private speech is protected, subject to the laws of defamation, slander, and libel.

Trademarks often originate from private speech. Mr. Tam is an individual who started a musical group. He chose to name that group the Slants. This is entirely protected by private speech considerations, as previously discussed.

Commercial Speech

Mr. Tam, however, also now uses THE SLANTS as a trademark in the scope of marketing his music, musical performances, and the sale of recorded music to a consuming public. This may have transformed the use of the Slants from private speech into commercial speech. There is a specific reason for this transformation under the law. Under the Constitution, the only basis Congress has to protect trademarks as legal property is through the Commerce Clause. Trademarks are protectable only to the extent they are actively “used in commerce” to associate the mark with particular goods and services. But for this “use” there is no protection for trademark rights for anyone.

Trademarks are therefore commercial speech, at least to some extent. Commercial speech is more restricted than private speech. For example, there are a multitude of concepts, products and even words that cannot be said on television or radio through the marketing of a product. You can legally name a product after a profanity, but that does not provide you complete freedom to market that product to the public without the Federal Communications Commission stepping in to censor profanities through such commercial speech in a television advertisement on a public broadcast network. There are limits.

Government Speech

Making matters even more complicated is the bridge between private speech and commercial speech in the realm of trademarks. Especially when an individual seeks to register a trademark through the USPTO. One of the issues the Supreme Court will have to address is whether the act of “registering” a trademark and maintaining a database of trademark registrations is a form of implicit government speech by the USPTO. Is a registration a form of government sponsorship of that trademark? Therefore, if the government refuses to register a trademark that might be deemed “disparaging” would that constitute government speech that impinges on the rights of private speech (to the extent such disparagement is not defamatory).

As you might imagine, government speech is heavily regulated and First Amendment considerations are ever present in any analysis of government speech. If the USPTO’s decision to grant a trademark registration is considered to be government speech, any decision to reject a registration based on the content of the mark would directly conflict with free speech rights. This is precisely the battle Mr. Tam seeks to present to the Supreme Court.

Conclusions?

Personally? I believe trademarks are entirely commercial speech and should be regulated accordingly. I have no problem with the USPTO rejecting registrations for offensive, disparaging, or scandalous content within a mark. No one is losing anything by not having a trademark registration. The trademark still exists and can still be “used” to identify the source of goods and service. For more of my personal opinions on the legal issues underlying this dispute, you can read my position on the matter here.

Most important, what I want the reader to take away from this is that Lee v. Tam is not about “political correctness.” It is not about what words we can or cannot say or use in the United States. It is not about whether THE SLANTS is a trademark. It is not about what you can or cannot name a musical group. Mr. Tam did not lose his trademark. He just does not have a federal trademark registration, which may not be ideal, but it is not as if the government is taking rights away from him. Mr. Tam and his rock band just may not get the additional legal benefits afforded those with trademark registrations.

[1] 15 U.S.C. § 1052(a).

[2] USPTO definitions; see also Trademark Manual of Examining Procedure § 1202. https://mpep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e718.html

[3] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 n.15 (1992) (Stevens, J., concurring).

[4] Id. (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 n.14 (1982)).