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A Free Speech Right to Trademark Protection?

106 Trademark Reporter 797 (2016)

San Diego Legal Studies Paper No. 16-225

89 Pages Posted: 27 Oct 2016 Last revised: 4 Nov 2016

Lisa P. Ramsey

University of San Diego School of Law

Date Written: October 26, 2016

Abstract

This Article explores whether the right to freedom of expression requires governments to register trademarks that are immoral, scandalous, disparaging, or otherwise offensive. Many nations ban the registration of offensive marks, including the United States for the last 100 years. In the U.S. Federal Circuit’s 2015 en banc decision in In re Tam, which involved an appeal from the U.S. Patent and Trademark Office’s refusal to register the mark THE SLANTS for an Asian-American rock band, the court held the disparagement provision in Section 2(a) of the U.S. Lanham Act violated the Free Speech Clause in the First Amendment of the U.S. Constitution. The U.S. Supreme Court has now agreed to address the issue.

This Article first contends that international law does not require U.S. and foreign courts to recognize a free speech right to trademark protection of offensive marks. It then argues that courts and commentators often do not raise and correctly evaluate all of the issues that may arise in a free expression challenge to a trademark law. The Article provides a framework–a list of “elements” required to establish a free speech violation–that can be used to evaluate whether a trademark law violates the right to freedom of expression in a nation’s constitution or human rights treaties. This framework is then applied to the provision in Section 2(a) of the U.S. Lanham Act banning registration of marks which are immoral or scandalous, or which may disparage others, with the resulting conclusion that Section 2(a) is constitutional.

Keywords: Trademark, Freedom of Expression, Free Speech, First Amendment, Human Rights, Constitutional Law

JEL Classification: K00, K33, O34

Suggested Citation

Ramsey, Lisa P., A Free Speech Right to Trademark Protection? (October 26, 2016). 106 Trademark Reporter 797 (2016); San Diego Legal Studies Paper No. 16-225. Available at SSRN: https://ssrn.com/abstract=2860302

Lisa Ramsey (Contact Author)

University of San Diego School of Law ( email )

5998 Alcala Park
San Diego, CA 92110-2492
United States

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