Trademarks are ubiquitous in the everyday lives of countless consumers. Indeed, some consumers have little difficulty drawing big brand logos from memory, down to the precise colors and details. ((Branded in Memory, Signs.com, https://www.signs.com/branded-in-memory/.)) That aptitude did not arise by happenstance: brands are designed to create a bond between the consumer and the product by provoking the consumer’s emotions. ((Christie Barakat, Emotional Branding and the Emotionally Intelligent Consumer, Adweek, http://www.adweek.com/digital/emotional-branding-emotionally-intelligent-consumer/.)) Still, some brands garner notoriety for provoking emotion in an unsettling way due to their inflammatory nature. ((See, e.g., Valerie Richardson, ‘Redskins’ offensive to American Indians even if most disagree, critics say, Wash. Post, http://www.washingtontimes.com/news/2016/may/19/redskins-offensive-even-if-most-native-americans-d/.)) Recognizing the effect of inflammatory trademarks, Congress took steps to curtail the registration of any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” ((15 U.S.C. § 1052 (2006).)) How one feels about such regulation depends on notions of free speech and the desirability of government intervention. In a landmark decision this past June, the Supreme Court unanimously held that the disparagement clause of the Lanham Act violates the First Amendment’s Free Speech Clause. ((Matal v. Tam, 137 S.Ct. 1744 (2017).)) This blog post aims both to provide details of the case and to speculate as to its effects on other anti-registration prongs of the Lanham Act.
Simon Tam is the lead singer of “The Slants.” ((Id., at 6.)) He chose this moniker in order to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity. ((Id., at 7.)) The group “draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes” and has given its albums names including “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” ((Id.)) Tam sought federal registration of “THE SLANTS,” on the principal register . . . but an examining attorney at the United States Patent and Trademark Office (“PTO”) rejected the request, applying the PTO’s two-part framework and finding that “there is . . . a substantial composite of persons who find the term in the applied for mark offensive.” ((Id.)) Tam appealed the PTO’s decision to the Federal Circuit, which held the disparagement clause to be facially unconstitutional under the First Amendment’s Free Speech Clause. ((Id.)) The Government then filed a petition for certiorari, which the Supreme Court granted in order to consider the constitutionality of the disparagement clause. ((Id., at 8.)) In striking down the disparagement clause, the Court emphasized viewpoint neutrality: “The First Amendment forbids the government to regulate speech in ways that favor some viewpoints or ideas at the expense of others.” ((Id., at 13)) Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.” ((Id., at 25.)) Underscoring its rationale, the Court wrote, “if affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.” ((Id., at 26.)) The decision came as no surprise to the trademark community, and the holding now calls into question the validity of the remainder of Section 2(a) of the Lanham Act. ((The Slants Win in Matal v. Tam: Trademark Registration Cannot Be Denied for Offensive Terms, Nat’l Law Review, https://www.natlawreview.com/article/slants-win-matal-v-tam-trademark-registration-cannot-be-denied-offensive-terms.))
The restriction of Section 2(a) covering scandalous and immoral material seems primed for a determination of unconstitutionality. ((Id.)) Drawing on the Court’s viewpoint neutrality requirement emphasized in Tam, it seems rather easy to replace the “thought that we hate” with the “thought that we find scandalous” in trademark/free speech protection. Simon Tam saw the term “slant” from an uncommon viewpoint, namely by seeking to transform the term into one that is positive. Others, undoubtedly, see the term in a less positive light, viewing it as fostering feelings that any slur is bound to foster. Yet, the Court stressed that free speech reigns supreme. Immoral trademarks are likely to be protected by the First Amendment in the same manner. Just like disparaging, hateful terms, the propriety of immoral terms can divide people based on viewpoint. Until any clause is officially struck down, all we can do is speculate. Fortunately, we may not have to wait long. The scandalous prong of Section 2(a) was recently litigated in the Federal Circuit. ((Scott Graham, Federal Circuit Wrestles with Vulgar Trademarks in ‘Fuct’ Case, Inside Counsel, http://www.insidecounsel.com/2017/08/30/federal-circuit-wrestles-with-vulgar-trademarks-in.)) In that case, the applicant, Erik Brunetti, appealed the PTO’s refusal to register his “Fuct” mark for apparel. ((Id.)) The Federal Circuit held Section 2(a)’s bar on scandalous or immoral marks to be unconstitutional. ((In re Erik Brunetti, 2015-1109 (Fed. Cir. 2017).)) From here, things may get interesting should the Supreme Court decide to grant a petition for certiorari. The Court could choose to strike down all of Section 2(a). While that may not be the likeliest outcome, at the very least, Congress would have to deal with Section 2(a) of the Lanham Act in the event that the scandalous prong is found invalid. While we wait, the future of Section 2(a) remains in limbo.