Under Section 2 the Lanham Act of 1946, the United States Patent and Trademark Office can deny trademark registration to any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage. . .persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 USCS § 1052 (1946). While one is free to use any disparaging, scandalous or immoral mark as a signifier, trademark protection is precluded, leaving the mark open to copying and infringement. But this might soon be changing, thanks to the Asian American dance-rock band “The Slants.”
Simon Shiao Tam and his band applied to register their band name “The Slants” for a trademark in 2011, but the mark was denied as disparaging because it “deride[s] and mock[s] a physical feature” of many people of Asian descent. In re Tam, 808 F.3d 1321, 1331 (Fed. Cir. 2015). While upheld by the Trademark Trial and Appeal Board, the case was eventually vacated and remanded by the United States Court of Appeals for the Federal Circuit, who decided in a 9-3 decision that the ban on disparaging marks was a violation of the First Amendment, and therefore unconstitutional. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). Now, the U.S. Supreme Court has agreed to hear the case, and their decision could impact not just disparaging marks, but scandalous and immoral marks as well. Or it could not. Here’s why.
The Federal Circuit found the ban on disparaging marks unconstitutional on First Amendment grounds, but it is not guaranteed that the Supreme Court will follow the reasoning of the Federal Circuit if they decide to affirm the decision. For example, the Supreme Court could narrow the scope of the decision, reasoning that the ban on disparaging trademarks is unconstitutional only as it applies to political or expressive speech, but not commercial speech. The Slants have indeed stated that they chose their band name as a concentrated effort to “reclaim” and “take ownership” of the term, which, according to the band, makes their mark political speech, whose regulation as disparaging is subject to strict scrutiny. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The Federal Circuit agreed, and found that Section 2(a) of the Lanham Act’s preclusion of disparaging marks was a regulation of expressive speech, not commercial speech, and thus subject to an intermediate level of scrutiny, lower than that of expressive or political speech.
However, the Supreme Court has still found some trademarks to be purely commercial speech, and they could make a similar distinction here. Friedman v. Rogers, 440 U.S. 1 (U.S. 1979). If the Supreme Court reasons that Section 2(a) is unconstitutional as applied only to political and expressive speech, then marks such as the contentious Redskins mark might not be saved by the outcome. The Redskins would be hard pressed to find a successful argument that their use of the Redskins mark rises to political or expressive speech, instead of mere commercial speech. A Supreme Court decision based on political and expressive speech could also fail to have an impact on the scandalous and immoral preclusions of Section 2(a).
The Supreme Court could also decide to avoid the First Amendment question altogether, and find the ban on disparaging marks unconstitutionally vague, as Circuit Judge O’Malley did in his concurrence. In re Tam, 808 F.3d 1321, 1358 (Fed. Cir. 2015). This would allow the Court to avoid the complexities of invalidating part of the Lanham Act on First Amendment grounds. In order for a statute or clause to survive a vagueness challenge, it must “give the person of ordinary intelligence a reasonable opportunity to know what is prohibited, so that he may act accordingly.” Grayned v. City of Rockford, 408 U.S. 104, 108 (U.S. 1972). The Supreme Court need only look to the uneven and unpredictable way certain marks have been denied as disparaging as evidence that there is a lack of consensus as to what constitutes a disparaging mark. If the Supreme Court decides to take this route in deciding the Slants case, it would almost certainly hand a win to the Redskins on their appeal. However, a finding of vagueness need not have a strong impact on future cases regarding scandalous or immoral marks, such as In re Brunetti, where the Federal Circuit is expected to address the constitutionality of the prohibition on registering scandalous marks. If future courts could show that scandalous and immoral marks were accepted or denied in a more uniform manner, or that the public had a more consistent view of the terms, a decision that “disparaging” is vague would not necessarily be fatal to bans on disparaging marks.
Whatever decision the Supreme Court makes, no doubt the owners of previously denied marks, as well as newly created ones, will be watching closely.
Kristen Iglesias is a J.D. candidate, 2018, at NYU School of Law.