Two United States Courts of Appeals, the Fourth Circuit and the Federal Circuit, are set to examine the question of whether or not Section 2(a) of the United States Trademark Act, otherwise known as the “Lanham Act,” is in violation of the First Amendment and, therefore, unconstitutional. The section provides that the USPTO can deny or cancel a trademark on the Principal Register if it consists of “immoral, deceptive, or scandalous matter, or which may disparage … institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Fans of professional football are more or less familiar with this controversy. This is the dispute that the Washington Redskins encountered over their team’s trademarked name. The Redskins filed their notice of appeal in the Fourth Circuit last month after the Eastern District of Virginia ordered the cancellation of the team’s six registered trademarks.
A similar case is at the door of the Federal Circuit. Simon Tam, founder of Asian-American “Chinatown dance rock” band “The Slants,” is challenging the Trademark Trial and Appeal Board’s (TTAB) decision to reject his trademark application based on Section 2(a) of the Trademark Act. Tam is already six years into his trademark battle, but is optimistic that the case will go to the Supreme Court and ultimately resolve in his favor.
Currently, then, the constitutionality of section 2(a) is pending before two different United States District Courts. As many acknowledge, if both cases produce conflicting results, then the issue is more than likely to end up in the Supreme Court.
A large part of the controversy is over whether or not a trademark qualifies as “private speech” or “government speech.” Eugene Volokh of the Washington Post concisely draws the distinction between the two:
“First Amendment law has recognized that if the government creates a broadly available benefit scheme aimed at promoting private speech…the government generally may not then deny such access to some speakers based on their viewpoints. On the other hand, if the government is viewed as itself speaking, even in cooperation with private speakers, the government may indeed pick and choose which viewpoints it promotes or fails to promote.”
If trademarks are a “public forum for private speech,” and the government rejects or cancels a trademark under Section 2(a) in disregard of the registrant’s contention that the mark is not intended to be offensive, then the rejection or cancellation could be “viewpoint discrimination,” and a violation of the First Amendment.
The government commits “viewpoint discrimination” when it makes rules or laws that favor or disfavor certain opinions about a particular controversy. The owner of the Washington Redskins claims that the team’s name expresses only “honor and respect,” and many Native Americans disagree. Simon Tam contends that he is “reclaiming” a derogatory term by naming his band “The Slants.” While Tam’s controversy has not garnered nearly as much media attention as the Redskins scandal, it is unique in that the TTAB itself, rather than a collective of Asian-American individuals, made the determination that the name is offensive. Are these cases examples of viewpoint discrimination? Is a trademark the exclusive speech of its creator, or the speech of (or in cooperation with) the government that affords it protection under the law? The Supreme Court may soon have to weigh in on these questions.
By Brian Unger