by Jay Marshall Wolman
Free speech and the Lanham Act (the federal law dealing with trademarks) has been a hot topic of late. There are two high profile matters in separate courts of appeals challenging the constitutionality of Section 2(a), which prohibits the registration of disparaging marks.
In the Federal Circuit is the matter In re: Tam, in which the band, The Slants, is challenging the refusal of the registration of the mark in its name. Their brief can be found here. Marc previously commented on that case here. (Disclaimer: Marc wrote a brief for the First Amendment Lawyers’ Association. That brief is here. You may also want to read Marc’s infamous “Fuck” brief here. The viewpoints expressed herein are my own and should not be construed as those of Marc Randazza, Randazza Legal Group, or the First Amendment Lawyers’ Association.)
The Slants and the Redskins are both arguing, among other things, that the ban on registration of disparaging marks is an unconstitutional restriction of speech. It is not a content-neutral regulation and they claim that the denial or cancellation burdens their commercial speech, when compared to others, since they cannot enforce the marks to the same extent. They claim it is not government sanctioned speech, per se, simply by registering the mark. The Redskins brief specifically highlights other offensive (it believes) marks that have passed muster and no one believes that the registration=government speech. It specifically distinguishes the Texas License Plate case, Walker v. Texas Division, Sons of Confederate Veterans, Inc.,135 S. Ct. 2239 (2015), noting that trademark registrations, unlike license plates, are not generally known to be vehicles for government speech.
Because these are pending before different circuits, it is well possible for there to be a circuit split that might ultimately warrant Supreme Court review.
Omitted from discussion, and worth noting, is that, in essence, trademarks actually limit free speech. Prof. Lisa Ramsey argues as much here. Conceptually, a trademark registration means that my right to speak your mark is limited. Hypothetically, it means that in my sporting goods store that caters to British clients, I cannot probably label American baseballs as Yankee balls; it means that I cannot probably market a device that lets a Microsoft and Apple computer talk to each other as a “Surface to Air Missile”. And descriptive marks are even more limiting–only Fox News is allowed to call itself “Fair and Balanced”.
When thinking about these together, the Slants and Redskins are arguing that their speech rights are being limited because they don’t have the same right to limit the speech of others as others might have. Normally, the argument is that registration of the mark limits speech. Here, they argue that denial of registration limits speech. They may well be right in the end, but this is definitely one of those interesting competing rights cases.