The Patent & Trademark Office Has a Slanted View of the First Amendment

Yesterday’s Supreme Court ruling regarding Confederate-flag license plates isn’t the last word on First Amendment protection for “offensive” speech. Indeed, it doesn’t even resolve all the issues related to government-insinuated expression. One case working its way through the lower courts regarding a controversial trademark – but not this one! – illustrates some of the pitfalls inherent in allowing the government to act as censor, for whatever reason.

A musician named Simon Tam wanted to “take back” and “own” what had previously been used as an ethnic slur by calling his Asian-American rock band “The Slants.” The Patent and Trademark Office found that this trademark was disparaging to Asians, however, so refused to register it under § 2(a) of the Lanham Act. This provision says, among other things, that the PTO may refuse to register a trademark that “[c]onsists of … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

This refusal to register the trademark was affirmed by a three-judge panel of the U.S. Court of Appeals for the Federal Circuit. But then the entire Federal Circuit—without being asked!—decided to erase that decision and consider whether § 2(a), or at least its application here, violates the First Amendment.

Cato and the Rutherford Institute have filed a brief supporting Tam’s trademark petition at this expanded appellate stage.

Registration, although not required to use a particular logo or other mark, provides a variety of benefits, such as the assumption of nationwide notice, extra damages and attorney fees during litigation, and other intellectual property-related advantages. But § 2(a) conditions these benefits on not using expressions with which the government disagrees, which is clear viewpoint discrimination. The government’s position effectively gives pride of place to hypothetical people who may be hypothetically offended—but even offensive speech is protected by the First Amendment and courts have prohibited the use of a heckler’s veto to allow the restriction of protected speech.

Because the Trademark Office’s action directly burdens speech, to sustain it, the government needs to a show that it’s the only way to achieve a compelling interest. But even if the putative trademark were considered to be purely commercial speech—which currently enjoys less constitutional protection than other kinds—the registration-rejection would still fail because people can use the mark without registration (i.e., it’s not fraudulent or misleading). And nobody is saying that registering a trademark represents government speech or even government endorsement of private speech.

In short, limiting Tam’s ability to enjoy all the fruits of his trademark because the government thinks the band’s name is lame violates the First Amendment. The Federal Circuit should let The Slants rock on!