In February, 2017, we discussed a case being argued in front of the U.S. Supreme Court brought by Simon Tam, lead singer of a dance/rock band who wanted to register a trademark “The Slants” for his band. The Patent and Trademark Office (PTO) had rejected his application, applying a provision of the Lanham Act that barring the registration of trademarks that may “disparage . . . persons living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” Tam argued that he wanted to use the ethnic slur to “reclaim” the word and diminish its denigrating force.
In a High Court decision announced on June 19, 2017, Tam was vindicated. His band may now register the trademark, “The Slants.”
Stating that federal law does not create trademarks, but has protected and regulated trademarks since 1870, the Court noted that there are currently over two million trademarks with active federal registrations. The Federal District Court of Appeals sitting en banc had ruled that the PTO’s refusal to admit Tam’s registration of the name “The Slants” violated the First Amendment’s Free Speech clause.
The Interim Director of the PTO appealed and the Supreme Court granted certiorari. Even during oral argument before the High Court, Justices appeared critical of the so-called “disparagement clause” in the Lanham Act, 15 U.S.C . § 1052(a).
Justice Alito announced the unanimous decision of the eight Justices; Justice Gorsuch did not participate in the consideration of the case or in the decision.
The Court noted the important benefits that federal registration confers on the trademark owner, including protecting the ability of consumers to recognize trademarked products and fostering goodwill for the owner. The government had argued that federal registration of trademarks converted the trademarks into government speech and the protection of the trademark owner’s reputation conferred a government benefit, and, therefore, was a government subsidy that entitled the government to control the message of the trademark.
After considering and discrediting a side argument presented by Tam, namely that the term “persons” in the Lanham Act did not include “non-juristic” persons, i.e., non-natural persons, like racial and ethnic groups, the Court went on to consider the constitutional question. Noting that the First Amendment forbids the government to regulate speech that favors some viewpoints or ideas at the expense of others, the Court nevertheless stressed that the First Amendment does not apply to government speech. To impose a viewpoint-neutrality requirement on the government itself, the Court stated, would paralyze the government and prevent it from advocating actions essential to its functioning.
However, trademark does not constitute government speech.
“The Federal Government does not dream up these marks, and it does not edit marks,” the Court declared, and, “If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”
Adding to the levity, the Court gave such examples of “babbling” as Sony’s “make believe,” Nike’s “Just do it,” and Burger King’s “Have it your way.”
Disputing that trademarks are a form of government subsidies, the Court noted that, to the contrary, the trademark applicant must pay for the privilege of filing an application for trademark registration, a fee ranging from $225-600, and must pay a renewal of registration fee of $300-500 every ten years. Trademarks are not free and they are not a government subsidy, even if the trademark owner reaps non-monetary benefits due to trademark protection.
Finally, the Court had to decide whether trademarks were commercial speech, and entitled to a form of relaxed scrutiny rather than the highest form of scrutiny reserved for constitutional questions. On this point, several Justices took issue, although they concurred in the judgment.
Justice Alito stated the majority’s viewpoint that the test applied did not matter; the disparagement clause failed even the lesser standard of relaxed scrutiny applied to commercial speech. Calling the disparagement clause a “happy-talk clause,” the Court reiterated views expressed in the oral arguments, and affirmed that the government has an interest in preventing even speech that offends.
The Washington Redskins will be overjoyed at this decision. Its trademark, valued at over $2.4 billion, is safe.
Will college and university teams return to their former uses of racially-themed mascots? Will the Stanford Indian be resurrected? Or are current trademarks sufficiently visible that to change would be financially disastrous?
Whatever results from the Slants decision, the decision affirms the First Amendment’s freedom of speech and expression that is so unique in America and so treasured by Americans.
If you have any questions on this topic, please consult your legal counsel, or one of the attorneys at KingSpry.
This Collegiate Comment is a publication of the KingSpry Higher Education Law Division. It is meant to be informational and does not constitute legal advice.