This past term the U.S. Supreme Court [hereinafter the Court] held that the disparagement clause in the U.S. federal trademark statute [the Latham Act at 15 U.S.C. 1052(a)] is facially unconstitutional, because it abridges the free speech clause of the First Amendment. This challenged clause of the statute states in relevant part that trademarks and service marks [hereinafter marks] are not be eligible for federal registration if they disparage, or otherwise hold in contempt, persons, institutions or beliefs. Federal registration is a process by which the U.S. trademark office evaluates submitted marks, in part based upon their use and legal sufficiency. If a mark qualifies for federal registration, then the mark owner obtains significantly more legal rights than owners of unregistered marks.
Mr. Simon Tam applied to federally register the logo THE SLANTS as a service mark associated with live performances by his band. The trademark examiner refused registration because the logo is disparaging to persons of Asian ancestry, and the Trademark Trial & Appeal Board affirmed this basis. However, the Court of Appeals for the Federal Circuit Court en banc reversed the Trademark Trial & Appeal Board and held that section 1052(a) is facially unconstitutional because (i) it penalizes speech of which the government disapproves, and (ii)under a strict scrutiny standard for viewpoint based restrictions upon speech, it penalizes mark owners without a compelling government interest. The trademark office’s petition for a writ of certiorari was subsequently granted.
Before the Court Mr. Tam asserted in relevant part that the disparagement clause is impermissibly vague with no clear boundary for the term ‘disparages.’ Secondly, he asserted the statute imposes a significant burden upon speech with a particular content, because it deprives mark owners of important rights only available through federal mark registration. Thirdly, when a statute distinguishes speech, such as marks, based upon viewpoint and content there must be a compelling state interest for either private or commercial speech. The trademark office’s position in relevant part was that the disparagement clause does not penalize unpopular speech: Instead the clause (i) prevents the government from affirmatively assisting owners of marks which belittle a person or persons, and (ii) otherwise provides participation criteria for a government sponsored activity. It also asserted that even if the marks by themselves are purely private speech, they do not retain that status after federal register approval. The trademark office further asserted that there is no constitutional right to affirmative assistance from the government for promotion of private speech.
The Court held that the disparagement clause facially violates constitutional free speech protection and provided several reasons in support of this holding. First, it stated in relevant part that trademarks and services are private speech, and government may only regulate private speech if (i) there is a substantial government interest (ii) narrowly drawn to that interest. Because the government restriction is viewpoint based, then the restriction also requires heightened judicial scrutiny. The Court concluded there was no compelling or legitimate reason for the disparagement clause’s viewpoint based restriction, and that there is no such interest even if Mr. Tam’s mark is commercial speech. The Court also stated that even if viewpoint based regulation was appropriate, the disparagement clause is not sufficiently narrow in scope to exclusively eliminate marks that denigrate ethnic, racial and religious groups. For example, by its terms the clause forbids parodies of public figures, celebrities and institutions, but courts have consistently found these activities protected from viewpoint based restrictions. However, the Court did not suggest that the disparagement clause might become constitutional with an amendment that results in a narrower scope of viewpoint restricted private speech.
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