A Trademark Defense of the Disparagement Bar
14 Pages Posted: 2 Aug 2016 Last revised: 29 Oct 2016
Date Written: August 1, 2016
The Lanham Act proscribes the registration of trademarks that consist of disparaging matter. In In re Tam, the Federal Circuit declared the disparagement bar to be unconstitutional viewpoint discrimination under the First Amendment. The Supreme Court will review this decision. The fate of the disparagement bar is an urgent issue, for it is the basis of the effort to cancel trademark registrations belonging to the Washington football team.
This essay argues that the debate over the disparagement bar’s constitutionality is falsely cast as a conflict between principles of free expression and anti-discrimination to which trademark doctrine is an afterthought. This framing reinforces the perception that the disparagement bar is a form of viewpoint discrimination, for it treats the bar as disconnected from the traditional goals and mechanisms of trademark law.
In fact, the disparagement bar implicates more mundane issues of trademark policy that deserve fuller consideration than offered by In re Tam. Whatever the ability of the First Amendment to accommodate anti-discrimination policies external to trademark law, the disparagement bar also reflects principles internal to trademark law. More specifically, the disparagement bar manifests the traditional trademark policy that insists that would-be marks do a good job of performing the trademark function of source identification. Disparaging marks are just one of several categories of potential identifiers that fail this test. They may be excluded on that basis, without regard to the viewpoint embodied by any particular disparaging mark.
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