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Supremes Strike Down Ban on Disparaging Trademarks

Siding with Asian-American rockers who cheekily call themselves The Slants, the Supreme Court upheld an order Monday striking down the disparagement clause at the U.S. Patent and Trademark Office as unconstitutional.

WASHINGTON (CN) - Siding with an Asian-American rock group that cheekily calls itself The Slants, the Supreme Court upheld an order Monday striking down the disparagement clause at the U.S. Patent and Trademark Office as unconstitutional.

“It offends a bedrock First Amendment principle,” Justice Samuel Alito said of the Lanham Act clause, writing for the mostly unanimous court. “Speech may not be banned on the ground that it expresses ideas that offend.”

Owners of the football team the Washington Redskins are expected to see the ruling as vindicating their brand, against the objections of Native American groups that say the name is offensive.

“The Supreme Court’s ruling likely means that those Washington Redskins registrations will remain on the books at the USPTO," Dorsey & Whitney partner J. Michael Keyes said in a statement.

In the case at hand meanwhile, Alito worked through a number of hypotheticals to call it “far-fetched ... that the content of a registered mark is government speech.”

“If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently,” the ruling states. “It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

“For example, if trademarks represent government speech, what does the government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)? Was the government warning about a coming disaster when it registered the mark ‘EndTime Ministries’?

“The PTO has made it clear that registration does not constitute approval of a mark,” the ruling continues. “And it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”

Morrison & Foerster attorney Jennifer Lee Taylor emphasized that the opinion Monday is a narrow one, saying many in the trademark community had been surprised at how the government focused its case at oral argument.

“Section 2(a) of the Lanham Act proscribes the registration of immoral, deceptive, or scandalous trademarks, as well as trademarks that disparage others,” Taylor said in a statement. “The opinion does not mention how its ruling might affect registrations of marks that are considered immoral or scandalous, but do not disparage a particular group, because that issue was not before the court.  We can expect to see applicants claiming violations of their First Amendment rights when arguing against refusals of such marks in the future.”


Dorsey & Whitney partner Keyes meanwhile mentioned the possibility that Monday’s ruling will flood the PTO with trademark applications “containing all sorts of offensive or otherwise disparaging words, names, and symbols.”

Alito distinguished the case at hand from its 2015 precedent about specialty license plates in the ruling Walker v. Texas Division, Sons of Confederate Veterans Inc.

Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine,” the ruling states. “For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.”

Alito called literary copyrights a terrifying example of extending this logic.

The government also failed to invoke precedent about the constitutionality of government programs that subsidize expressive-viewpoint speech.

“The federal registration of a trademark is nothing like the programs at issue in these cases,” Alito wrote. “The PTO does not pay money to parties seeking registration of a mark. Quite the contrary is true: An applicant for registration must pay the PTO a filing fee of $225–$600.”

Indeed, in the case at hand, Slants front man Simon Tam submitted a fee of $275 as part of his trademark-registration application.

“And to maintain federal registration,” Alito added, “the holder of a mark must pay a fee of $300–$500 every 10 years. The Federal Circuit concluded that these fees have fully supported the registration system for the past 27 years.”

Alito emphasized that the expenditure of government funds is unavoidable in just about every context.

“This is true of services that benefit everyone, like police and fire protection, as well as services that are utilized by only some, e.g., the adjudication of private lawsuits and the use of public parks and highways,” the ruling states. “Trademark registration is not the only government registration scheme. For example, the federal government registers copyrights and patents. State governments and their subdivisions register the title to real property and security interests; they issue driver’s licenses, motor vehicle registrations, and hunting, fishing, and boating licenses or permits.”

A final section of the ruling concludes that the disparagement clause was not drawn narrowly enough “to drive out trademarks that support invidious discrimination.”

“It is not an anti-discrimination clause; it is a happy-talk clause,” Alito wrote. “In this way, it goes much further than is necessary to serve the interest asserted. The clause is far too broad in other ways as well. The clause protects every person living or dead as well as every institution. Is it conceivable that commerce would be disrupted by a trademark saying: ‘James Buchanan was a disastrous president’ or ‘Slavery is an evil institution?’

“There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The 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.”

Noting that there are a variety of nondisparagement provisions in several state laws, Dorsey & Whitney’s Keyes said they “are also likely unconstitutional as a result of the Supreme Court’s ruling.”

Though Monday’s ruling is mostly unanimous, several of the justices abstained from certain sections of the opinion, and Justice Neil Gorsuch was not yet confirmed on the court when it held oral arguments this past January.

“The danger of viewpoint discrimination is that the government is attempting to remove certain ideas or perspectives from a broader debate,” a concurring opinion signed by Justice Anthony Kennedy states. “That danger is all the greater if the ideas or perspectives are ones a particular audience might think offensive, at least at first hearing. An initial reaction may prompt further reflection, leading to a more reasoned, more tolerant position.

“Indeed, 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.”

Justices Ruth Bader Ginsburg, Sonia Sotomayor and Elena Kagan joined the concurrence.

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