The Hybrid Trademark and Free Speech Right Forged From Matal v. Tam

By Timothy T. Hsieh*

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Introduction

Before the U.S. Supreme Court case of Matal v. Tam, trademarks could
not be registered if they “disparage[d] or [brought]…into contemp[t] or disrepute” any “persons, living or dead.”[1] The U.S. Supreme Court concluded in Tam that the “Disparagement Clause” violated the Free Speech Clause of the First Amendment and also offended “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”[2] This legal development has integrated the First Amendment Free Speech right with the traditional rights that a registered trademark possesses. In other words, a new hybrid form of trademark intellectual property has been forged by the U.S. Supreme Court case of Matal v. Tam, a form that combines trademark rights with the Free Speech rights under the First Amendment and no longer restricts the registration of a trademark on any content-based justifications. That is, a trademark can now be registered on any content that the trademark
owner desires.

This may seem on the surface to improve the vigor of a
competitive trademark market place by removing government restrictions and
allowing participants to engage in the free-flowing exchange of ideas, but
there are concerns that this new hybrid form of trademark will be abused. The
United States Patent and Trademark Office (“USPTO”) may start granting
registrations to a barrage of offensive racial slurs, sexist terms or other
profanities designed to insult individuals on the basis of their ethnicity,
gender, sexual orientation, age, and other aspects of their identity.

One immediate cause of concern is the “Washington Redskins”
trademark and the corresponding litigation over the trademark in federal
courts.[3] Because the
Disparagement Clause has been struck down, the Washington Redskins now have the
right to pursue registration of their mark, which Native American tribes argue
is disparaging. In the aftermath of the Matal v. Tam decision,
can organizations (like the Washington Redskins) or individuals now register
such offensive marks? Will the USPTO be flooded by such “disparaging” trademark
applications as a result? This paper proposes that such an outcome is unlikely,
or that concern is simply blown out of proportion. Sound marketing practices
and goodwill advise against or mitigate that outcome.[4] Common business sense would also
suggest that such offensive marks would not be successful in the marketplace.

On the other hand, Free Speech in trademarks gives certain
artists or organizations, like “The Slants” or “Dykes on Bikes”, the ability to express themselves fully without censorship. Such organizations show that some
trademark holders wish to register a mark to “self-disparage” a class that he
or she belongs to for an artistic, political or other expression-based purpose.
This paper argues that any concern of this new hybrid Free Speech trademark
right is outweighed by the right of expression by groups who should be able to
exercise the First Amendment in an intellectual property or trademark context.

In addition, this paper argues that this new hybrid form of
trademark and Free Speech right is now in sync with parallel fields of
intellectual property which do not usually recognize “content-based” limitations,
such as Copyright Law (being able to copyright anything, even if it is
offensive) and Patent Law (the hardly invoked provision preventing the
patenting of inventions used for atomic weapons).[5] The comparison to roughly equivalent doctrines in these related fields of intellectual property
is to suggest that the effect of removing content-based restrictions (e.g. in
the arena of Copyright Law) or attempting to enforce outdated content-based
limitations (e.g. in Patent Law) has minimal effect, if any, on the robustness
of the underlying intellectual property right. In fact, this paper contends
that removing restrictions and infusing trademark rights with Free Speech
rights can only lead to benefits.

Part II of this Article will survey the cases leading up to
and cited by the Matal v. Tam case and analyze relevant law.
Part III of this Article will aver that broader business concerns will likely
suppress the filing and registration of offensive marks, leaving only
exceptional cases, marks having years of built-up history and tradition, such
as the Washington Redskins. Part III of this article will additionally argue
that the interest of groups in “self-disparaging” for expression-based reason
outweighs any concern that the filing and registration of disparaging
trademarks will get out of hand. Part IV of this Article compares the new
hybrid Free Speech and Trademark right with other approximate equivalents in
Copyright Law and Patent Law to argue that the trademark right will not suffer
any detriment in being merged with Free Speech rights and may in fact see
positive benefits. Finally, Part V of this Article provides a summary of the
arguments and points made throughout.

I. The Matal v. Tam U.S. Supreme Court Case

Simon Tam is the lead singer of a band named “The Slants,”[6] which specializes
in a brand of music influenced by other 80s pop-synth bands such as Depeche
Mode, Joy Division, The Cure, and New Order termed “Chinatown Dance Rock.”[7]

In an interview with The New York Times, Tam explains how he
decided to name the band “The Slants”:

My first real lesson on the power of language was at the age
of 11. On the basketball courts at school in San Diego, I was tormented by
other students. They’d throw balls, punches, rocks and insults, while yelling
“gook” and “Jap.” One day, I had enough. I threw back, “I’m a chink, get it
right.” Stunned, they didn’t know what to do. Confused, they stopped.

The act of claiming an identity can be transformational. It
can provide healing and empowerment. It can weld solidarity within a community.
And, perhaps most important, it can diminish the power of an oppressor, a
dominant group.

The idea of reappropriation isn’t
new. The process of turning negative words, symbols or ideas into positive
parts of our own identity can involve repurposing a racial epithet or taking on
a stereotype for sociopolitical empowerment. But reappropriation
can be confusing. Sometimes people can’t figure out the nuances of why
something is or isn’t offensive — government bureaucrats in particular.[8]

Tam goes on to state that The Slants “toured the country,
promoting social justice, playing anime conventions, raising money for
charities and fighting stereotypes about Asian-Americans by playing bold music.
Never once, after performing hundreds of shows across the continent, did [they] receive a single complaint from an Asian-American. In fact, [the band’s] name
[‘The Slants’] became a catalyst for meaningful discussions with non-Asians
about racial stereotypes.”[9]

A. The Rejection by the USPTO and the TTAB Appeal

Acting on their attorney’s recommendation to register “The
Slants” as a trademark, Tam filed a trademark application for the mark because
that was “something that’s commonly done for national acts” and “a critical
step in a music career, not only to protect fans from inadvertently purchasing
tickets to another band with a similar name but also because most major record
labels and licensing agencies won’t work with acts that can’t register their
names.”[10]

When Tam sought registration of “THE SLANTS” on the
principal register, the Examining Attorney at the USPTO rejected the
registration, applying the two-part framework for disparagement under the
Disparagement Clause and the Trademark Manual of Examining Procedure (“TMEP”).
The Examining Attorney found that there was “a substantial composite of persons
who find the term in the applied-for mark offensive.”[11] The Disparagement
Clause is a provision of the Lanham Act at 15 U.S.C. § 1052(a) that prohibits
the registration of a trademark “which may disparage . . . persons, living or
dead, institutions, beliefs, or national symbols, or bring them into contempt,
or disrepute.”[12]

The two-part framework in determining whether a mark is
disparaging first considers “the likely meaning of the matter in question,
taking into account not only dictionary definitions, but also the relationship
of the matter to the other elements in the mark, the nature of the goods or
services, and the manner in which the mark is used in the marketplace in
connection with the goods or services.”[13] “If that meaning
is found to refer to identifiable persons, institutions, beliefs or national
symbols,” the examining attorney moves to the second step, which asks “whether
that meaning may be disparaging to a substantial composite of the referenced
group.”[14] After these two
steps, if the examining attorney finds that a “substantial composite, although
not necessarily a majority, of the referenced group would find the proposed
mark…to be disparaging in the context of contemporary attitudes,” a prima facie case of disparagement is
made out, and the burden shifts to the trademark applicant to prove that the
mark is not disparaging.[15]

In Tam’s rejection, the examining attorney relied in part on
the fact that “numerous dictionaries define ‘slants’ or ‘slant-eyes’ as a
derogatory or offensive term”[16] and according to Simon Tam, the examiner also
“used sources like UrbanDictionary.com, a photo of Miley Cyrus pulling her eyes
back in a mocking gesture and anonymous posts on internet message boards to
‘prove’ that [the mark] was offensive.”[17]

Tam then contested the USPTO examining attorney’s denial of
registration before the Trademark Trial and Appeal Board (“TTAB”), but was not
successful.[18] Thereafter, Tam
appealed the TTAB’s decision to the Federal Circuit.

B. The Federal Circuit In re Tam Case

The U.S. Court of Appeals for the Federal Circuit took up
Tam’s appeal from the TTAB. According to Tam, for the past seven years, he has
“supplied thousands of pages of evidence, including letters of support from
prominent community leaders and organizations, independent national surveys
that showed that over 90 percent of Asian-Americans supported our use of the
name and an expert report from a co-editor at the New American Oxford
Dictionary.”[19] In response, the
USPTO called Tam’s effort “laudable, but not influential” and further stated in
a 2011 decision that “[i]t is uncontested that
applicant is a founding member” of a band “composed of members of Asian
descent,” and afterwards pointed to Asian imagery on The Slant’s official
website, “including photographs of Asian people and an album cover with a
‘stylized dragon.’”[20] According to Tam,
“it was as if because we were Asian, because we were celebrating Asian-American
culture, we could not trademark the name the Slants. Yet ‘slant’ is an everyday
term—one that has been registered as a trademark many times, primarily by white
people.”[21]

The Federal Circuit, sitting en banc, rendered a majority opinion authored by Judge Moore ruling
that the Disparagement Clause was facially unconstitutional under the First
Amendment because the Disparagement Clause engaged in viewpoint based
discrimination, regulated the expressive component of trademarks and
consequently could not be treated as commercial speech—and that the
Disparagement Clause was subject to and could not satisfy strict scrutiny.[22] The Federal
Circuit also rejected the USPTO’s argument that registered trademarks constituted
government speech, as well as the USPTO’s assertion that federal registration
was a form of government subsidy.[23] Furthermore, the
Federal Circuit held that even if the Disparagement Clause were to be analyzed
under the “intermediate scrutiny” standard applied to commercial speech, it
would still fail.[24]

In a concurring opinion, Judge O’Malley agreed with Judge
Moore’s majority opinion but also added that the Disparagement Clause was
unconstitutionally vague.[25] Judge Dyk’s opinion concurred in part and dissented in part,
opining that trademark registration was a government subsidy and that the
Disparagement Clause was facially constitutional, but unconstitutional as
applied to “THE SLANTS” mark because it constituted “core expression” and was
not adopted for the purpose of disparaging Asian Americans.[26] Judge Lourie
delivered a dissenting opinion where he agreed with Judge Dyk
that the Disparagement Clause was facially constitutional but concluded for a
variety of reasons that it was also constitutional as applied to the “THE
SLANTS” mark in this case.[27] Finally, Judge
Reyna also posited a dissenting opinion, contending that trademarks are
commercial speech and that the Disparagement Clause survives the intermediate
scrutiny test for commercial speech because it “directly advances the
government’s substantial interest in the orderly flow of commerce.”[28] In the aftermath
of the Federal Circuit’s en banc decision of In re Tam, the USPTO filed a petition for certiorari with the U.S.
Supreme Court.

C. The Supreme Court’s Majority Opinion in Matal v. Tam

The U.S. Supreme Court granted the USPTO’s petition for
certiorari to ultimately decide whether the Disparagement Clause “is facially
invalid under the Free Speech Clause of the First Amendment.”[29]

In Justice Alito’s majority opinion, before reaching the
question of whether the Disparagement Clause violated the First Amendment, the
Court considered Tam’s argument that the Disparagement Clause did not cover
marks that disparage racial or ethnic groups, an argument that was not raised
before the TTAB or the Federal Circuit.[30] The Court held
that Tam’s argument about the definition of “persons” (that racial and ethnic
groups were neither natural nor “juristic” persons) was meritless; by the plain
terms of the Disparagement Clause, a mark that disparages a “substantial”
percentage of the members of a racial or ethnic group necessarily disparages
many “persons,” namely, members of that group. Moreover, the Disparagement
Clause also applied not to just “persons” but also to “institutions and
“beliefs”—implying that it extends to members of any group who share particular
“beliefs” such as political, ideological and religious groups, “institutions”
and “juristic” persons such as corporations, unions, and other unincorporated
associations. Thus, the Disparagement Clause was not limited to marks that
disparage a particular natural person.[31]

The Court also found unpersuasive Tam’s arguments that his
interpretation of the Disparagement Clause was supported by its legislative history
and by the USPTO’s willingness for many years to register marks that were
offensive to African-Americans and Native Americans because: (i) the statutory language of the Disparagement Clause is
unambiguous thereby precluding any analysis of the legislative history, (ii)
even if the legislative history were to be examined, Tam did not bring to the
Court’s attention any evidence in the legislative history showing that Congress
meant to adopt his interpretation, and (iii) the registration of offensive marks
Tam cited is “likely attributable not to the acceptance of his interpretation
of the clause but to other factors—most likely the regrettable attitudes and
sensibilities of the time in question.”[32]

1. Government Speech/Subsidy/Program Analysis

Turning to the main question of whether the Disparagement
Clause violates the First Amendment, the Court analyzed three arguments
advanced by the USPTO: (1) trademarks are government speech, not private
speech, (2) trademarks are a form of government subsidy, and (3) the
constitutionality of the Disparagement Clause should be tested under a new
“government-program” doctrine.[33]

i. Trademarks are Not Government Speech

Justice Alito recited the rule that the Free Speech Clause
does not require the government to maintain viewpoint neutrality when its
officers and employees speak about a course of action a government entity
embarks on, where it necessarily takes a particular viewpoint and rejects
others.[34] One simple example
was when the Federal Government produced and distributed posters during the
Second World War to promote the war effort (e.g., by urging enlistment, the
purchasing of war bonds and the conservation of scarce resources) and expressed
a viewpoint; “the First Amendment did not demand that the Government balance the
message of the posters by producing and distributing posters encouraging
Americans to refrain from engaging in these activities.”[35]

Justice Alito mentioned that the government-speech doctrine
is susceptible to “dangerous misuse” because if “private speech could be passed
off as government speech by simply affixing a government seal of approval,
[the] government could silence or muffle the expression of disfavored
viewpoints.”[36] Furthermore, the
Court noted that even though trademarks are registered by the USPTO, an arm of
the Federal Government, the Federal Government does not “dream up these marks”
and “it does not edit marks submitted for registration;” further, other than
the Disparagement Clause, “an examiner may not reject a mark based on a
viewpoint that it appears to express.”[37] As a result, “an
examiner does not inquire about whether any viewpoint conveyed by a mark is
consistent with Government policy or whether any such viewpoint is consistent
with that expressed by other marks already on the principal register.” If a
mark meets the Lanham Act’s other viewpoint-neutral requirements, then
registration is mandatory. If an examiner finds that a mark is eligible for
placement on the principal register, that decision is not reviewed by any
higher official unless the registration is challenged. Also, “once a mark is registered, the USPTO
is not authorized to remove it from the register unless a party moves for
cancellation, the registration expires, or the Federal Trade Commission
initiates proceedings based on certain grounds.”[38]

With all of this in mind, Justice Alito concluded that it is
“far-fetched to suggest that the content of a registered mark is government
speech” because if the federal registration of a trademark makes the mark
government speech, the Federal Government is “babbling prodigiously and
incoherently,” “saying many unseemly things,” “expressing contradictory views,”
“unashamedly endorsing a vast array of commercial products and services,” and
“providing Delphic advice to the consuming public.”[39] The Court then
gives several examples of conflicting and variegated registered marks to ask
what the Government has in mind when it advises Americans to “make.believe” (Sony), “Think different” (Apple), “Just do
it” (Nike), “Have it your way” (Burger King), or was the Government warning
about a coming disaster when it registered the mark “EndTime
Ministries”?[40]

The Court went on to state that the USPTO “has made it clear
that registration does not constitute approval of a mark,” “it is unlikely that
more than a tiny fraction of the public has any idea what federal registration
of a trademark means,” and “[n]one of [the Court’s] prior government speech
cases even remotely supports the idea that registered trademarks are government
speech.”[41]

The Court discussed and distinguished the case on which the
USPTO relies on most heavily, Walker v.
Texas Division, Sons of Confederate Veterans, Inc., which the Court declares as likely marking “the outer bounds of
the government-speech doctrine.”[42] In Walker, the Court held that messages on
Texas specialty license plates bearing the confederate flag were government
speech by applying the three factors from the Summum case: (1) whether the medium historically communicated the message
of the state, (2) whether the public closely associates the message with the
State, and (3) whether the government maintains direct control over the
message.[43] First, license plates have long been
used by the States to convey state messages; second, license plates “are often
closely identified in the public mind” with the State, since they are
manufactured and owned by the State, generally designed by the State and serve
as a form of “government ID”; and third, Texas “maintain[ed] direct control over the messages conveyed on its specialty plates.”[44] The Court then
held that none of the above mentioned factors were present in the current case
pertaining to trademark registration, that federal trademark registration is
“vastly different” from the government speech found it previous U.S. Supreme
Court cases. The Court opined that if the registration of a trademark converted
the mark into government speech, this “would constitute a huge and dangerous
extension of the government-speech doctrine” for “if the registration of
trademarks constituted government speech, other systems of government
registration could easily be characterized in the same way.”[45]

As will be discussed later on in the paper, the Court
addressed the concern of extending the USPTO’s application of government speech
to copyrights. The Court responded to this concern by stating that trademarks
often also have expressive content, and companies spend huge amounts to create
and publicize trademarks that convey a message. “It is true that the necessary
brevity of trademarks limits what they can say. But powerful messages can
sometimes be conveyed in just a few words.”[46]

Thus, the Court concluded that trademarks are private, not
government speech.[47]

ii. Trademarks Are Not Government Subsidies

The Court addressed the USPTO’s argument that trademarks are
government subsidized speech by stating that all the cases that the USPTO
relies on involved cash subsidies or the equivalent.[48] The Court stated
that the federal registration of a trademark is nothing like the programs at
issue in those cases because the USPTO “does not pay money to parties seeking
registration of a mark”; to the contrary, applicants must pay the USPTO a
filing fee of $225-$600 and Tam himself paid the USPTO a fee of $275 to
register “THE SLANTS.”[49] Indeed, the
Federal Circuit has stated that those fees have fully supported the trademark
registration system for the past 27 years.[50]

In response to the USPTO’s argument that trademark
“registration provides valuable non-monetary benefits that ‘are directly
traceable to the resources devoted by the federal government to examining,
publishing, and issuing certificates of registration for those marks,’” the
Court stated that “just about every government service requires the expenditure
of government funds” such as police and fire protection, the adjudication of
private lawsuits and the use of public parks and highways.[51] The Court also
mentioned that trademark registration is not the only government registration
scheme—there are also federal patents and copyrights. State governments also
register titles to real property and security interests in addition to issuing
driver’s licenses, motor vehicle registrations, and hunting, fishing and
boating licenses and permits.[52] Thus, the Court
declined to interpret federal trademark registration as a government subsidy
because the case law cited by the USPTO (as well as the universe of case law
involving government subsidies) was not instructive.

iii. Trademarks are Not Government Programs

Finally, in response to the USPTO’s argument that the
disparagement clause would apply to “government program” cases—a merger of
government speech cases and government subsidy cases with “[t]he only new
element . . . of two cases involving a public employee’s collection of union
dues from its employees,” the Court stated that trademark registration was far
removed from that area because “those cases occupy a special area of First
Amendment case law.”[53]

The Court further mentioned a potentially more analogous
line of cases in which a unit of government creates a limited public forum for
private speech.[54] When the
government creates such a forum, in either a literal or “metaphysical” sense,
some content and speaker based restrictions may be permitted.[55] In such cases
however, “viewpoint discrimination” is forbidden.[56] Extending the
viewpoint discrimination test, where the word “viewpoint” is applied broadly,
the Court concluded that the Disparagement Clause discriminates on the basis of
“viewpoint” because it “evenhandedly prohibits disparagement of all groups,” it
“applies equally to marks that damn Democrats and Republicans, capitalists and
socialists, and those arrayed on both sides of every possible issue” and
“denies registration to any mark that is offensive to a substantial percentage
of the members of any group.”[57]

The Court concluded that the Disparagement Clause is
viewpoint discrimination because “[g]iving offense is
a viewpoint” and that it cannot be saved by analyzing it as a type of
government program in which some content and speaker based restrictions are
permitted.[58]

2. Commercial Speech Analysis

Justice Alito’s majority opinion then turned to whether
trademarks are commercial speech and are thus subject to the relaxed scrutiny
test as outlined by the Central Hudson case.[59] The USPTO and the amici that supported the USPTO’s
position argued that trademarks are commercial speech because the central
purposes of trademarks are commercial and that federal law regulates trademarks
to promote fair and orderly interstate commerce, while Tam and his amici argued that many, if not all,
trademarks have an expressive component beyond simply identifying the source of
a product or service and go on to say something more, either about the product
or service or some broader issue (such as “THE SLANTS” mark at issue in the
case, which not only identifies the band, but also expresses a view about
social issues).[60] The Court
determined that the debate need not be resolved because the Disparagement
Clause did not withstand even relaxed scrutiny review under Central Hudson, which requires that a
restriction of speech serve a “substantial interest” and be “narrowly drawn” in
order to be constitutional under the First Amendment. This means that “[t]he
regulatory technique may extend only as far as the interest it serves.”[61]

The Court reached the conclusion that the Disparagement
Clause failed Central Hudson relaxed
scrutiny review because even though the Disparagement Clause served two
interests—the first being the Government’s interest in preventing speech
expressing ideas that offend[62] and the second being protecting the
orderly flow of commerce[63]—the Disparagement
Clause was not “narrowly drawn” to those interests. That is, the Disparagement
Clause was not “narrowly drawn” to drive out trademarks that support “invidious
discrimination” because it reached any trademark that disparaged “any person, group, or institution,”
applying to trademarks such as “Down with racists”, “Down with sexists”, “Down
with homophobes.”[64] In that respect,
the Disparagement Clause was not an anti-discrimination clause, it was a
“happy-talk clause” and in this way, it went “further than is necessary to
serve the interest asserted.”[65] The Court also
stated that the Disparagement Clause was overly broad because it protected
every person living or dead as well as every institution.[66] The Court finally
addressed a “deeper problem” with the argument that commercial speech may be
cleansed of any expression likely to cause offense because

[t]he commercial market is well stocked with merchandise
that disparages prominent figures and groups and the line between commercial
and non-commercial speech is not always clear, as this case illustrates. If
affixing the commercial label permits the suppression of any speech that may
lead to political or social ‘volatility,’ free speech would be endangered.[67]

For all the above reasons, the Court majority held that the
Disparagement Clause violated the Free Speech Clause of the First Amendment.

D. Justice Kennedy’s Concurring Opinion

Justice Kennedy’s concurring opinion, which Justices
Ginsburg, Sotomayor and Kagan joined, stated that the Court correctly held that
the Disparagement Clause engaged in viewpoint discrimination, but explains in
greater detail why the First Amendment’s protections against viewpoint
discrimination apply to “THE SLANTS” trademark here. Justice Kennedy submitted
further that the viewpoint discrimination rationale renders unnecessary any
extended treatment of other questions raised by the parties.[68]

First, Justice Kennedy explained that the First Amendment
guards against laws “targeted at specific subject matter,” a form of speech
suppression known as content based discrimination, which includes a subtype of
laws that are aimed at the suppression of “particular views…on a subject.”
Furthermore, a law found to discriminate based on viewpoint is an “egregious
form of content discrimination,” which is “presumptively unconstitutional.”[69] Justice Kennedy
went on to state that, at its most basic, the test for viewpoint discrimination
is whether—within the relevant subject category—the government has singled out
a subset of messages for disfavor based on the views expressed. In the present
case, the Disparagement Clause reflected the Government’s disapproval of a
subset of messages it found offensive, which is the essence of viewpoint
discrimination.[70]

Justice Kennedy dismissed the Government’s argument that the
Disparagement Clause was viewpoint neutral because it applied in equal measure
to any trademark that demeans or offends, noting that it missed the point
because a “subject that is first defined by content and then regulated or
censored by mandating only one sort of comment is not viewpoint neutral,” and
to “prohibit all sides from criticizing their opponents makes a law more
viewpoint based, not less so.”[71] In response to the
Government’s argument that the Disparagement Clause was viewpoint neutral
because it applied to trademarks regardless of the applicant’s personal views
or reasons for using the mark, Justice Kennedy stated that the Government may
not insulate a law from charges of viewpoint discrimination by tying censorship
to the reaction of the speaker’s audience.[72] Justice Kennedy stated:

[i]ndeed, a speech burden based on audience reactions is
simply government hostility and intervention in a different guise. The speech
is targeted, after all, based on the government’s disapproval of the speaker’s
choice of message. And it is the government itself that is attempting in this
case to decide whether the relevant audience would find the speech offensive.
For reasons like these, the Court’s cases have long prohibited the government
from justifying a First Amendment burden by pointing to the offensiveness of
the speech to be suppressed.[73]

Justice Kennedy summarized the contradictory folly of the
Disparagement Clause by stating that “the dissonance between the trademark’s
potential to teach and the Government’s insistence on its own, opposite, and
negative interpretation confirms the constitutional vice of the statute.”[74]

Second, turning to
the commercial speech and government subsidy analysis, Justice Kennedy stated
that, to the extent that trademarks qualify as commercial speech, they are an
example of why that term or category does not serve as a blanket exemption from
the First Amendment’s requirement of viewpoint neutrality, and in the realm of
trademarks, the metaphorical marketplace of ideas becomes a tangible, powerful
reality.[75] Justice Kennedy stated
that the question here is not how other provisions of the Lanham Act square
with the First Amendment. Rather, the Court’s precedents recognized just one
narrow situation in which viewpoint discrimination is permissible: where the
government itself is speaking or recruiting others to communicate a message on
its behalf.[76] Justice Kennedy
also pointed out that this case does not involve the situation where private
speakers are selected for a government program to assist the government in
advancing a particular message.[77] Finally, Justice
Kennedy concluded by stating that a law like the Disparagement Clause can be
directed against speech found offensive to some portion of the public and can
be turned against minority and dissenting views to the detriment of all.[78] The “First
Amendment does not entrust that power to the government’s benevolence” and “[i]nstead, our reliance must be on
the substantial safeguards of free and open discussion in a democratic
society.”[79]

Justice Thomas, in his concurring opinion, joined in all
aspects of Justice Alito’s majority opinion except with respect to Part II, rejecting
Tam’s interpretation arguments on “persons” within the Disparagement Clause,
because he saw no reason to address this legal question in the first instance.[80]

Justice Thomas also wrote separately because he continued
“to believe that when the government seeks to restrict truthful speech in order
to suppress the ideas it conveys, strict scrutiny is appropriate, whether or
not the speech in question may be characterized as ‘commercial.’”[81] However, Justice
Thomas joined in Part IV of Justice Alito’s opinion because he opined that it
correctly concluded that the Disparagement Clause was unconstitutional even
under the less stringent test of Central
Hudson review.[82]

II. Predictions on The Aftermath of Matal v. Tam

Simon Tam had this to say about the period leading up to and
after the Supreme Court opinion was delivered in Matal v. Tam:

After we won our case in a federal court, the Trademark
Office asked the Supreme Court to review the case. That very same week, the
office granted another new registration for “slant” to a company that makes
industrial coils. I may be the only person denied a registration for “slant”
because it was deemed offensive to Asian-Americans.

This week, the Supreme Court reversed the Trademark Office’s
decision, striking down the law that denied trademark protection to names
deemed derogatory. Some supporters of that law claim that offensive names will
now routinely receive trademark protection. (The Washington Redskins is a
widely cited example.) But my response is that the Trademark Office doesn’t
have the cultural understanding to determine what is or isn’t racist.[83]

Now that the Disparagement Clause has been ruled
unconstitutional, will there be a
flood of offensive trademarks filed with the USPTO? What about other marks
previously denied or cancelled under the Disparagement Clause, such as the
Washington Redskins mark? This paper predicts that there will not be a
substantial increase in offensive mark filings, due to goodwill concerns and common
business sense. Additionally, the fact that the Disparagement Clause survived
for nearly 70 years despite major First Amendment concerns suggests that issues
with disparaging marks are relatively uncommon.

Only in rare cases where businesses have successfully built
up goodwill in a mark, despite the mark being potentially disparaging or
offensive—such as the Washington Redskins trademark—would the mark be worth
registering with the USPTO. This leaves the opportunity to register trademarks
for “self-disparagement,” political, or artistic reasons or to reappropriate or reclaim a term, which encourages the
free-flow of expression in an ever-changing marketplace of ideas. Encouraging
freedom of expression from these groups outweighs any concerns raised by potential,
though unlikely, excessive filing of offensive marks.

A. Low Probability of Highly Offensive Mark Filings

An immediate knee-jerk prediction to Matal v. Tam might be a sharp increase in the filing of offensive or derogatory
marks with the USPTO. One attorney remarks that the “Trademark Official Gazette
may soon require a parental advisory on the cover.”[84] But there is
reason to believe this concern is blown out of proportion.

The main reason why offensive filings likely will not
increase is that there is no indication that there were many offensive mark
filings awaiting registration (or were denied registration due to the
Disparagement Clause) to begin with. Why else would it have taken nearly 70
years for a trademark applicant to challenge the statute?[85] Simon Tam and The
Slants also challenged the statute at roughly the same time as the Washington
Redskins did (give or take several years). It appears that the interest in
obtaining a disparaging mark is not high amongst brands, companies or groups.
In other words, there may not be many trademark applicants who wish to register
offensive marks generally.

To see why this may be the case, we should look to
underlying psychological concerns and motivations of both purchasing consumers
and businesses that wish to thrive. Common business sense would dictate that
naming one’s company, group, or brand after an offensive word or slur would not
exactly be good marketing.[86]

Other factors potentially preventing an increase in the
registration of marks are the burdens of acquiring registration of a mark,
which are rigorous and not to be underestimated.[87] To register a
mark, applicants must show that they will actually use the mark in commerce –
which may be unlikely for holders of offensive marks.[88] Furthermore,
“merely ornamental” marks that do not serve the source identifying purpose
behind trademarks will also likely not be registered.[89] The other barriers
present in the registration process will likely discourage many applications
from registering offensive marks. Many will likely give up after realizing the
difficulty.

Beyond the registration process, there are other business
reasons to not adopt disparaging marks. The “shock factor” of such marks are
often temporary or transient at best. Building goodwill, brand loyalty, and
trust in the marketplace would prove difficult by relying solely on such a
gimmick. There have been examples of marks from French Connection United
Kingdom (who stylized their shirts as “fcuk” to mimic
the word “fuck”), but that company registered a mark on a misspelling of a cuss
word that also happened to be the acronym for its company. One can hardly
imagine that company or a similarly situated one now being able to register a
mark for “fuck” and generating substantial business from it.

Additionally, the post-Matal Federal Circuit case of In
re Brunetti reversed the rejection of the mark “FUCT” for various items of
clothing under Section 2(a) because the Lanham Act’s ban on registering immoral
or scandalous trademarks was unconstitutional on First Amendment grounds, as
held by Tam.[90] There may be
individuals or companies out there who believe registering offensive marks can
lead to promising business opportunities.[91] This may be a new,
exciting, and wide-open market, as some commentators suggest that the Brunetti case further expands the realm
of potentially offensive subject matter now protectable by federal trademark
registration.[92]

In the context of racial slurs or words considered insulting
to a group (be it political, religious, cultural, etc.), there is even less
motivation for a company to brand themselves or a product after such
disparaging terms. Not only could they risk alienating large segments of
customers with such a choice, but that decision would also chip away and
deteriorate whatever sense of reputation or goodwill that company has already
built up. Therefore, the scenario in which companies will flock to the USPTO to
register disparaging marks seems highly unlikely, unless the company wishes to
commit a form of brand suicide. Scandalous, “shocking” advertising campaigns
can be achieved through marks like FUCT, now permissible in light of In re Brunetti. Individuals and
companies can achieve the same or similar marketing results without using
disparaging marks, which run the risk of alienating potential consumers.

B. The Washington Redskins Mark

One class of now-registerable disparaging or offensive marks
is the type of mark that has already built up years of goodwill, brand
recognition and notoriety. A perfect example of this group of marks is the
Washington Redskins mark, which was challenged in litigation both in federal
courts and the TTAB.[93] However, as even
Justice Alito mentioned in the majority opinion of Matal v. Tam, there have been many other marks considered derogatory,
offensive and/or disparaging to minority groups registered due to the nature of
the times.[94] The difference with
this class of marks is that they have already spent years of time, resources
and money building up their brand with an already registered mark—whereas
potential trademark owners wishing to now register offensive marks in the wake
of Matal v. Tam have to start from nothing, and
will likely acquire nothing to build their brand, due to the analysis discussed
above in Part III(A).

Even though marks like the Washington Redskins trademark or
“FUCT” are valid after the Matal v. Tam and In re Brunetti cases, there is some
solace for groups disparaged by such marks. These marks are few and far
between. The other offensive marks registered according to the condition of
standards at the time (as mentioned by Justice Alito), have either expired or
are not used by any businesses or enterprises considered even remotely
successful.

C. Free Speech Interests Outweigh Offensive Mark Filings

Regardless, a compelling countervailing interest outweighs
the concern of increased filing of offensive marks. That interest is our
ability to give certain artists or organizations like “The Slants” or “Dykes on
Bikes” the right to “self-disparage.” By allowing such groups to fully exercise
their Free Speech rights under the First Amendment, the robustness of speech
will increase and the marketplace of ideas will be diversified. Groups like The
Slants will also be able to reclaim and reappropriate
previously offensive terms in order to gain cultural or political ground in
other arenas. As mentioned before by the New York Times article penned by Simon
Tam, there is power in reappropriation. The
possibilities that this hybrid Free Speech trademark right gives to individuals
and groups like The Slants and Dykes on Bikes is limitless, and should be
encouraged in order to fully reach the potential envisioned by the First
Amendment.

Notably, filers after the Matal v. Tam case have been primarily aiming to “take back” racial slurs
and reappropriate them—from an African American
applicant attempting to register “nigga” in order to “reclaim the word” and
“sell T-shirts that celebrate themes such as unity and brotherhood” to a patent
lawyer in Alexandria, Virginia trying to register the swastika in order to “put
it in a drawer and make sure nobody uses it” by selling merchandise such as
blankets, shirts, and flags for the exorbitantly expensive price of a thousand
dollars each.[95] These examples
suggest that the Tam decision has
sparked reappropriation of disparaging terms and
images, rather than promoted disparagement of minority groups.

III. Comparisons to Patent Law & Copyright Law

This new hybrid Free Speech and Trademark right can also be
compared with approximate equivalents in Copyright Law and Patent Law to argue
that the trademark right, by itself, will not suffer any detriment in being
merged with Free Speech rights and may in fact see positive benefits.

Taking copyright law as the first example, copyrights can be
obtained and registered for offensive material, mainly because copyrights are
so closely tied to expression and are in fact “an engine of free expression.”[96] Being able to
copyright anything, even if it is offensive, makes the copyright form of
intellectual property stronger, more diverse, and more robust. The same effect
will likely occur for this new Trademark and Free Speech right created in the
wake of Matal v. Tam.

As for Patent Law, there is an outdated and hardly invoked
provision from the Atomic Energy Act of 1954 that prohibits the patenting of
inventions used for atomic weapons.[97] This provision is
somewhat of a “moral” clause, comparable to the Disparagement Clause. This
provision has hardly ever been used or cited by the USPTO, or challenged by
courts, and thus has a limited impact on patent rights. Thus, the Atomic Energy
Act in Patent Law, which runs “parallel” to the Disparagement Clause, goes to
show the limited impact such moral provisions have on intellectual property
rights.[98]

Conclusion

For the reasons described above, this paper asserts that
there will not be a substantial increase in the filings of offensive marks
post-Matal v. Tam, and that the free speech
interests of groups like The Slants and Dykes in Bikes is sufficient
justification for the Free Speech Trademark hybrid right to exist. In addition,
upon comparisons to roughly equivalent fields such as Copyright and Patent Law,
infusing Free Speech rights into the Trademark intellectual property right can
only make trademarks stronger.

Perhaps it would be fitting to end with Simon Tam’s final
comments on the case and the outcome of Matal v. Tam in
the U.S. Supreme Court, in the op-ed he penned for The New York Times:

Social theorists say that our identity can both be influenced
by as well as influence the world around us. Every scientific study confirms
that the stigma of derogatory terms like “queer” and “bitch” are mediated by
perceived power when the referenced groups own them. The role of the government
shouldn’t include deciding how members of a group define themselves. That right
should belong to the community itself.

The battles about hate speech shouldn’t be waged at the
Trademark Office, decided by those who have no connections to our communities.
Those skirmishes lead to arbitrary, inconsistent results and slowly chip away
at the dignity and agency of oppressed people to decide appropriateness on our
terms. A person’s quality of life, opportunities and rights may hinge on that
person’s identity. Those rights should not hinge on the hunch of a government
employee armed with wiki-joke websites. It’s suppression of speech in the most
absurd manner.

Americans need to examine our systems of privilege and the
ways unconscious bias affects our attitudes. But that discussion begins with
the freedom to choose our language. As we sing on “From the Heart” on our
latest album, “The Band Who Must Not Be Named”:

So sorry if you take
offense

But silence will not
make amends

The system’s all wrong

And it won’t be long

Before the kids are
singing our song.[99]