Can the government decline to register disparaging trademarks?

December 13, 2016 | By CALEB TROTTER

Simon Tam is the frontman of the popular Portland, Oregon, band called The Slants. A few years ago Mr. Tam sought to register The Slants as a trademark with the United States Patent and Trademark Office. While the term has traditionally been used as a derogatory slur for persons of Asian descent, Mr. Tam (an Asian-American) and his fellow Asian-American band members sought to reappropriate the term. With their band, The Slants provide an interesting and entertaining platform for discussing discrimination against Asian-Americans. Unfortunately, the government denied Mr. Tam’s request to register The Slants because it “disparaged” people of Asian descent.

As we’ve discussed here, here, and here, Mr. Tam challenged the government’s denial, and his case is scheduled to be argued in January in the United States Supreme Court. Today, as promised, PLF filed an amicus brief in support of Mr. Tam’s constitutional challenge to the disparagement clause.

At issue in the case is whether the disparagement clause of section 2(a) of the Lanham Act violates the right to free speech protected by the First Amendment. The problematic section 2(a) states that the government shall not refuse to register a trademark unless the mark “consists of…matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

In defense of the Act, the government primarily argues that the Act doesn’t restrict speech at all, but merely serves as a component of the government’s system for registering trademarks. Alternatively, the government claims that the Act only restricts government speech or commercial speech, so trademarks are unworthy of full First Amendment protection. It’s that last argument—commercial speech—that PLF’s brief takes head-on.

The biggest problem with the government’s attempt to cast trademarks as commercial speech is that many trademarks—and The Slants in particular—do not fit the Supreme Court’s definition for commercial speech. While the “commercial speech doctrine” is notoriously confusing and hard to apply, the one consistency is that it applies only to speech that “does no more than propose a commercial transaction,” and serves to protect the public from commercial harms and fraud.

But The Slants, and many other trademarks, do far more than merely propose commercial transactions. Indeed, Mr. Tam’s purpose in naming his band The Slants is to create a platform for commenting on racial discrimination. As a result, classifying trademarks as commercial speech, and relegating them to diminished First Amendment protection that accompanies that classification, is unconstitutional and unjust.

Furthermore, the Supreme Court is long overdue in expressly renouncing the commercial speech doctrine and overruling the case that created the misbegotten four-part test for analyzing government restrictions of commercial speech—Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n. Because there was never any principled rationale for giving commercial speech less protection than other forms of speech in the first place, and the Central Hudson test has proven to be unworkable, PLF’s brief urges the Court to continue its recent trend in clarifying the protections of the First Amendment and put the final nail in the commercial speech doctrine’s coffin.

Because the government refused to register The Slants due to the content of the mark and the government’s viewpoint that the mark is disparaging, the disparagement clause should be subject to strict scrutiny. Even though trademarks have some overlap with speech on commercial topics, that is not enough to spare content- and viewpoint-based speech restrictions from full First Amendment scrutiny.