A Free Speech Right to Trademark Protection?

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