Look to your left. Now look to your right. Only one of you will survive. This phrase, which purportedly used to be common in opening addresses at higher-level learning institutions albeit with different wording1 has recently become reality for parts of the statute that establishes rules and procedures for federal registration of trademarks—the Lanham Act (“the Act”).2 Specifically at issue are certain bars to federal trademark registration, as the Supreme Court recently struck down the Act’s immoral and scandalous prohibitions on First Amendment grounds.3 The relevant section of the Act states, in part, that an otherwise valid trademark shall not be refused registration on account of its nature unless it “[c]onsists of or comprises immoral, deceptive, or scandalous matter . . . .”4 The deceptive bar to federal registration is thus sandwiched on the right and left by registration bars that were ruled invalid. Unlike with the saying that began this paragraph, however, there is no guarantee that the deceptive bar will itself survive. Rather, the concern remains that the Court will eventually strike down this restriction for reasons substantially similar to those articulated in Iancu v. Brunetti.
To address this concern, it will be useful to carefully examine the Supreme Court’s decisions and reasoning in both Brunetti and an earlier case, Matal v. Tam.5 In the Tam decision, the Court ultimately held that the disparagement bar of the Act was an unconstitutional violation of the First Amendment’s Free Speech Clause.6 The disparagement bar prevented federal registration of trademarks that contained “matter which may disparage or falsely suggest a connection with persons, living or dead . . . or bring them into contempt or disrepute . . . .”7 The Patent and Trademark Office (PTO) thus denied registration for “THE SLANTS,” finding it to be derogatory and offensive toward “a substantial composite of persons” (namely persons of Asian ethnicity).8 On review, the Federal Circuit ruled that the disparagement bar was facially unconstitutional, and the Supreme Court affirmed.9
The Government argued that federal registration of trademarks should be considered government speech, which would allow the government to avoid the requirement of viewpoint-neutrality.10 The Court rejected this argument, holding that trademarks, even when federally registered, constitute private rather than government speech.11 Further, the Court refused to apply either the “government-subsidy” or “government-program” doctrines, both of which would have allowed the government more discretion in denying registration.12 Rather, the Court focused on the expressive nature of trademarks and stated that depriving individuals of the right to express an offensive message through their trademarks would constitute viewpoint-based discrimination.13 While the Court was split on exactly what test should be applied to this restriction on speech, it unanimously agreed that the restriction did not serve a substantial enough interest nor was it narrowly tailored. One purported interest of the Government was protecting underrepresented groups from constant bombardment by hateful messages, but the Court determined that this boiled down to prohibiting offensive ideas, which the First Amendment does not allow.14 The Court also declared that the Government’s interest in protecting the “orderly flow of commerce” by preventing the use of disparaging trademarks was not narrowly drawn since trademarks consisting of non-invidious discrimination (e.g. “Down with racists”) would also be barred.15
Moving to Iancu v. Brunetti, much of the Court’s analysis remained the same. Here, the applicant, Erik Brunetti, attempted to register his trademark “FUCT” for a clothing line.16 The PTO and on appeal the Trademark Trial and Appeal Board denied registration on the grounds that the trademark was “highly offensive” and “vulgar” in violation of the Act’s bar on immoral or scandalous matter.17 Brunetti challenged the Constitutionality of the Act’s immoral and scandalous bars, and the Supreme Court ultimately affirmed the Federal Circuit’s ruling that the relevant portions violated the First Amendment.18
The Court, relying heavily on Tam, expressed the idea that any challenge to any registration bar of the Act would boil down to a single question: is the registration view-point based? If answered affirmatively, the provision will “collide with our First Amendment doctrine.”19 In this case, the Court determined that the immoral and scandalous bars, which had typically been applied by the PTO as a unitary provision,20 existed as view-point discrimination and were therefore in violation of the First Amendment.21 Of particular importance was the Court’s refusal to narrow the construction of the immoral or scandalous bars, which may have saved it from violating the First Amendment. Specifically, despite arguments by the Government and Justice Sotomayor’s dissenting opinion, the Court’s opinion stated that the provisions could not be limited to include only those trademarks which are offensive or shocking due only to their mode of expression rather than any substantive views expressed.22 The Court’s stated reason for refusing such a limiting construction was that the text of the statute could not allow such an interpretation—the words immoral and scandalous clearly encompass ideas which cause offense through viewpoint, not just through mode of expression.23 Further, the Court rejected the Government’s related argument that the permissible applications of the registration bars in question should offer some protection from a sweeping facial attack due to relatively insubstantial unconstitutional applications.24
Turning now to the application of these principles to deceptive trademarks, it is first worth mentioning the traditional three-part test—as articulated by the Federal Circuit—for establishing when a trademark can be considered deceptive: (1) the trademark is misdescriptive of, inter alia, the character or quality of the goods; (2) some consumers would likely believe the misdescription is an accurate description; and (3) this misdescription would materially affect a consumer’s decision to purchase.25 While this characterization has the benefit of confining deceptive trademarks to those that would materially affect a consumer’s purchasing decision, it is not clear that such a restriction would be relevant according to the Brunetti framework. Specifically, the term deceptive generally has a much simpler definition of “tending or having power to cause someone to accept as true or valid what is false or invalid.”26 Thus, if the limiting definition provided by the Federal Circuit is rejected like the Government’s proposed limiting definition was in Brunetti, the deceptive bar would apply to any trademark that might cause consumers to accept as true something which was not, regardless of any affect on their eventual purchasing decision.
How, then, would the actual substantive framework of Tam and Brunetti apply to the Act’s bar on deceptive trademarks? As mentioned, Brunetti frames the issue as depending entirely on a single question: can the bar on deceptive trademarks be framed as view-point based discrimination? If yes, it would run squarely into a First Amendment challenge and almost certainly be invalidated. And it seems clear that banning deceptive trademarks could be categorized as view-point discrimination.
Consider, for example, the following hypothetical trademark: “THE UNITED STATES OF CHINA.” Such a trademark would likely cause some consumers to believe that the goods to which that trademark was attached were either produced in the wrong country (i.e. some consumers would believe the goods were made in the United States when they were actually made in China or visa versa) or that there was some sort of collaboration between the two countries when in fact there was none. In either case, the trademark would deceive consumers to accept as true that which is false, and it could therefore be denied registration as a deceptive trademark. To deny registration for such a trademark, however, could easily be framed as impermissible view-point discrimination. Such a trademark could express the view that the United States and China have become to interdependent, or it could be lamenting the global economy more generally. In any case, the Court in Tam made clear that the expressive nature of trademarks cannot be ignored, and “powerful messages can sometimes be conveyed in just a few words.”27 There seems to be no good reason why the expressive nature of trademarks would deserve any less protection if done using deception as opposed to disparagement, immorality, or scandal. Additionally, it is worth noting that even if most deceptive trademarks make no attempt at conveying such a message, the Court in Brunetti made clear that the existence of permissible applications could not protect a bar to registration that also enveloped impermissible view-point biased applications.
Of course, there is some room for pushback. In both Tam and Brunetti, the principle concern was an outright ban on material which offends, whereas the deceptive bar attempts to restrict material that is untruthful. While banning speech for merely being offensive has long conflicted with First Amendment principles,28 prohibiting untruthful speech is part of the reason that defamation, for example, does not receive First Amendment protection. The Court in Tam also rejected any attempt by the Government to offer a substantial interest that might rescue the statute should trademarks be considered commercial speech. Deceptive trademarks, on the other hand, seem to offer distinct and more substantial interests.
The Government, in maintaining the orderly flow of commerce and protecting the health and well-being of the public, certainly has an interest in providing consumers full and accurate information about the products they are consuming. The difference of this interest from those relating to disparaging or immoral and scandalous trademarks can helpfully be framed as a difference in the availability of information. When a consumer sees a product adorned with a trademark, that consumer can easily decide for herself whether the trademark is disparaging, immoral, or scandalous and thus something worth avoiding. By comparison, a consumer that sees a deceptive trademark has no way of knowing—without additional research beyond mere viewing of the trademark—whether it is in fact deceptive. By their very nature, deceptive trademarks prevent consumers from making an informed decision. Denying registration for deceptive marks could therefore protect consumers in ways that bars against disparaging, immoral, or scandalous material would not.
Even assuming the Court accepts these as a substantial interests, however, this formulation still faces the issue of whether the bar on deceptive trademarks is “narrowly drawn” so as to “extend only as far as the interest it serves,” and the Government would struggle to win this argument.29 As mentioned previously, the Supreme Court need not accept any narrowing definition for the registration bar. Without such narrowing, the bar is almost certainly overbroad. Prohibiting all trademarks by which consumers could be made to believe something that is not true would surely maintain orderly commerce and protect public welfare in some instances, but it would also extend beyond this interest into situations where the deceptive trademark failed to cause any substantial harm. Further, as mentioned previously, a registration bar with unconstitutional applications cannot be saved by merely pointing to numerous—even relatively outnumbering—permissible applications.
Given all this, the future of the Act’s bar on deceptive trademarks seems bleak. Such a bar can almost certainly be considered view-point discrimination, and the sweep of Tam and Brunetti leave little hope for a registration bar that has received this classification. Look to your left. Now look to your right. None of you will survive.
E.g., J. Gordon Hylton, Look to Your Left, Then Look to Your Right: Marquette University Law School, Fall 1919, Marquette University Law School Faculty Blog (Dec. 9, 2010), https://law.marquette.edu/facultyblog/2010/12/look-to-your-left-then-look-to-your-right-marquette-university-law-school-fall-1919/ (“Look to your left and then to your right, and three years from now, only one of you will still be here.”). ↩
15 U.S.C. §§ 1051-1141n (2019). ↩
Iancu v. Brunetti, 139 S. Ct. 2294 (2019). ↩
15 U.S.C. § 1052(a). ↩
Matal v. Tam, 137 S. Ct. 1744 (2017). ↩
Id. at 1751. ↩
15 U.S.C. § 1052(a). ↩
Tam, 137 S. Ct. at 1754. ↩
Id. at 1754, 1765. ↩
Id. at 1757. ↩
Id. at 1760. ↩
Id. at 1761-62. ↩
Id. at 1763. ↩
Id. at 1764. ↩
Id. at 1764-65. ↩
Iancu v. Brunetti, 139 S. Ct. at 2297. ↩
Id. at 2298. ↩
Id. at 2297-98. ↩
Id. at 2299. ↩
Id. at 2298. ↩
Id. at 2299-301. ↩
Id. at 2301. ↩
Id. at 2301-02. ↩
Id. at 2302. ↩
In re Budge Mfg. Co., 857 F.2d 773, 775 (Fed. Cir. 1988). ↩
Deceptive, Merriam-Webster Dictionary (last updated Oct. 20, 2019), https://www.merriam-webster.com/dictionary/deceptive. ↩
Matal v. Tam, 137 S. Ct. at 1760. ↩
See id. at 1751, 1763 (characterizing the idea that the government may not ban expression of an idea solely for being offensive or disagreeable as a “bedrock principle” of the First Amendment). ↩
Id. at 1764. ↩