Terrifying Trademarks and a Scandalous Disregard for the First Amendment: §2(A)'s Unconstitutional Prohibition on Scandalous, Immoral, and Disparaging Trademarks

42 Pages Posted: 13 Apr 2015 Last revised: 1 Apr 2016

See all articles by Kristian Stout

Kristian Stout

International Center for Law and Economics

Date Written: April 12, 2015

Abstract

It is uncontroversial to hold that speech is more than mere words. Speech is images, iconography, logos, and illustrations. Speech is wearing black armbands in school to protest a war, or burning an American flag to demonstrate against public policy. Speech can offend. One needs look no further than the reaction to cartoonists by religious fundamentalists: the offense of cartoons can be so deep that it moves individuals to commit murder.

When that speech is undertaken as part of commerce it does not magically lose any political, social or religious dimension it had when in a non-commercial context. Cartoons issued bearing the image of the Prophet as part of a commercial magazine are surely a political statement deserving of protection. The situation is the same if an organization adopts a logo that is derisive to a particular political or religious ideology – that publication is making a protected, expressive statement through its branding.

However, when it comes to obtaining a trademark on such a brand, speech receives significantly less protection than it does in other areas of law. The ongoing efforts to cancel the Redskins’ trademark are illustrative of the struggle a registrant of a controversial mark faces in light of lesser constitutional protections. First used by the football club in 1933, the Redskins have undergone multiple challenges to the use of their mark since 1992. The Redskins enjoyed initial success by relying upon a laches defense: the challengers had simply waited too long to challenge the controversial mark. However, in June 2014, the Trademark Trial and Appeal Board ("TTAB") decided that this defense no longer applied. In order to prove that their mark was not disparaging, the Redskins were forced to undergo a historical and cultural analysis in order to determine the extent of the mark’s offensiveness.

Losing that argument, the Redskins turned to a last ditch effort: argue that the First Amendment really can protect offensive speech, even in the context of the Lanham Act. I call it a last ditch effort because, even though Pro Football rightly argues that the Lanham Act attempts to unconstitutionally regulate the substantive content of speech, and that it also burdens disfavored speech that is nonetheless protected under the jurisprudence of the Supreme Court, the Federal Circuit has to date not seemed at all concerned with the First Amendment implications of the Lanham Act.

Section 2(a) of the Lanham Act – the federal statute governing the registration of trademarks – places a prohibition on the registration of "scandalous," "immoral" or "disparaging" marks. In support of this prohibition, the Patent and Trademark Office ("PTO"), together with the Trademark Trial and Appeal Board ("TTAB") and the Federal Circuit, have characterized the benefit granted by the Lanham Act as merely "procedural" and not "substantive." Further, by preventing registration of "immoral" or "disparaging" marks, the Federal Circuit believes that there is no actual harm suffered – said registrant remains free to utilize the mark in commerce, albeit without the protection of federal law.

However, this position propounded by the TTAB and reinforced by the Federal Circuit misses a very important dimension of the issue. The Lanham Act essentially creates a federally backed market in trademarks – one in which nonparticipants can be severely penalized by being unable to effectively compete on the national stage. To have an unprotected mark, one that any other entity is free to exercise as part of its commercial or noncommercial presence, can mean a total lack of identity. Further, the Lanham Act grants a number of benefits that taken together create a significant basis for investment on the part of individuals. Thus, to be denied federal registration of a trademark is not so insignificant a thing as the Federal Circuit would have us believe. Surely the denied registrants can continue to "speak," but their voice is significantly muffled.

This paper argues that the practice of silencing "immoral," "scandalous," and "disparaging" trademarks is unconstitutional, from at least two perspectives. First, the Unconstitutional Conditions doctrine prevents the Lanham Act from discriminating against "immoral" or "disparaging" trademarks. In essence, since trademarks constitute “intertwined speech” – that is an inextricable mixture of commercial and noncommercial speech – Congress’s limitation of that speech as a condition for the benefit of federal registration is unconstitutional. Second, trademarks may constitute a public forum such that the government would be restricted from viewpoint discrimination. This paper concludes by recommending a variety of ways that the §2(a) can be reframed to correct the constitutional deficiencies it poses to the Lanham Act.

Keywords: trademarks, Lanham Act, Redskins, disparaging, scandalous, immoral, First Amendment

JEL Classification: K19, K10, K30, K39

Suggested Citation

Stout, Kristian, Terrifying Trademarks and a Scandalous Disregard for the First Amendment: §2(A)'s Unconstitutional Prohibition on Scandalous, Immoral, and Disparaging Trademarks (April 12, 2015). Albany Law Journal of Science and Technology, Volume 25, Number 2, 2015 . Available at SSRN: https://ssrn.com/abstract=2593606

Kristian Stout (Contact Author)

International Center for Law and Economics ( email )

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Portland, OR Oregon 97232
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