Katherine A. Compton 2017-12-20 05:40:09
In June 2017, the U.S. Supreme Court considered whether the First Amendment’s free speech clause trumps the Lanham Act disparagement clause,1 which prohibits trademarks that “disparage …or bring… into contemp[t] or disrepute” any “persons, living or dead.” Simon Tam, lead singer of The Slants, sought trademark registration for his rock band name. The name appears to be a derogatory term for persons of Asian descent, but the members of the band felt that by taking that slur as their band name, they would “reclaim” the moniker and “drain its denigrating force as a derogatory term for Asian persons.”2 The group drew “inspiration from childhood slurs and mocking nursery rhymes.”3 The United States Patent and Trademark Office, or USPTO, denied the application based upon a provision of the Lanham Act disparagement clause.4 The examining attorney at the USPTO relied upon numerous dictionaries defining “slants” or “slant-eyes” as derogatory or offensive terms.5 Tam contested the denial of registration before the examining attorney and before the USPTO Trademark Trial and Appeal Board to no avail.6 He took the case to the Court of Appeals for the Federal Circuit, which found the disparagement clause facially unconstitutional under the First Amendment’s free speech clause.7 The Federal Circuit court found that the disparagement clause of the Lanham Act is “viewpoint-based discrimination… and cannot satisfy strict scrutiny.”8 The USPTO filed a petition for certiorari, which was granted to decide whether the disparagement clause is “facially invalid under the free speech clause of the First Amendment.”9 The USPTO made several arguments attempting to stop the registration. The USPTO first argued that trademarks are government speech, not private speech, because trademarks are registered by the USPTO, an arm of the federal government, and thus exempt from First Amendment scrutiny.10 The Supreme Court struck down this argument stating that “it is farfetched to suggest that the content of a registered mark is government speech.”11 The USPTO next argued that registration of a trademark is analogous to cases in which the government provided cash subsidies or their equivalent.12 The court held that the contrary is true—the USPTO does not pay monies to the registrant of a trademark—the registrant pays a filing fee for registration.13 Finally, the USPTO argued that the disparagement clause should be sustained under a new doctrine that combines the government speech cases with the subsidy cases.14 However, the court found those cases are no more relevant than the subsidy cases.15 The court found that the Lanham Act disparagement clause constituted viewpoint discrimination violating a bedrock principal of the First Amendment. In striking down the disparagement clause the court stated, “The government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”16 Notes 1) Lanham Act § 15 U.S.C. 1052(a). 2) Matal v. Tam, 137 S. Ct. 1744, 1761 (2017); 198 L. Ed. 2d 366, (2017). 3) 137 S. Ct. 1754; 198 L. Ed. 2d 373. 4) Id. 5) Id. 6) 137 S. Ct. 1754; 198 L. Ed. 2d 377. 7) In re Tam, 808 F. 3d 1321, 1334-1339 (Fed. Circ. 2015). 8) 137 S. Ct. 1754; 198 L. Ed. 2d 373. 9) Id. 10) 137 S. Ct. 1757; 198 L. Ed. 2d 380. 11) 137 S. Ct. 1758; 198 L. Ed. 2d 382. 12) 137 S. Ct. 1760; 198 L. Ed. 2d 384. 13) 137 S. Ct. 1761; 198 L. Ed. 2d 384-385. 14) 137 S. Ct. 1761-1762; 198 L. Ed. 2d 385. 15) 137 S. Ct. 1763; 198 L. Ed. 2d 387. 16) 137 S. Ct. 1764; 198 L. Ed. 2d 388. KATHERINE A. COMPTON, a Dallas-based trial lawyer with more than 25 years of experience, is a partner at Lewis Brisbois Bisgaard & Smith. She handles all types of complex commercial litigation, with an emphasis on trademark infringement, corporate/minority shareholder disputes, catastrophic personal injury, wrongful death, franchise, banking, real estate/lease, trade secrets, and non-compete litigation.
Published by State Bar of Texas. View All Articles.
This page can be found at http://mydigimag.rrd.com/article/Trademark+Litigation/2967632/463027/article.html.