The Case Formerly Known As Lee v. Tam

Trademark Law

Today, the Supreme Court of the United States issued its long-anticipated opinion in the case of Matal v. Tam (no longer Lee v. Tam since the recent resignation of Michelle Lee from her position as Director of the USPTO), after holding oral argument in the case in January of this year. For more background on my thoughts on the case and some of its prior procedural history, see my previous posts here and here.

The ultimate question that Tam raised was whether the clause of section 2(a) of the Lanham Act which prohibits federal registration to trademarks “which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” violates the Free Speech Clause of the Constitution.

Today, SCOTUS answered that question with a resounding yes.

The majority opinion, authored by Justice Alito, held that the disparagement clause of section 2(a) is unconstitutional as it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” (Note that some commentators are likely to take issue with use of the word offend. This is fair, as ‘disparagement’ and ‘offense’ are distinct concepts here.)

The majority first dismissed the rather weak argument asserted by Tam that the disparagement clause does not extend to marks that disparage racial or ethnic groups, and The Slants are therefore exempt from the provision.

The Court then went on to explain that trademarks are private speech, not government speech, with the quite memorable line “if the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.” No, the Federal Government is not telling you to “Just Do It”.*

Additionally, in the majority view, trademarks are not a form of government subsidy, nor should they be subjected to their own “government program doctrine”.

In what I expect to be a point of contention with many, the Court’s opinion fails to answer the question of whether trademarks are commercial speech. The Court reasons that even if trademarks are commercial speech, the disparagement clause would still not survive the “relaxed scrutiny outlined in Central Hudson. . .”. This is because the clause is easily classified as viewpoint discrimination and seeks to regulate trademarks far more broadly than necessary.

In a concurring opinion, Justice Kennedy (joined by Justices Ginsburg, Sotomayor, and Kagan), further explains that the disparagement provision constitutes viewpoint discrimination. Justice Kennedy explains that “The central purpose of trademark registration is to facilitate source identification.” And that “whether a mark is disparaging bears no plausible relation to that goal.”

Justice Thomas also wrote a concurrence in which he asserts that strict scrutiny ought to apply in any instance where “the government seeks to restrict truthful speech in order to suppress the ideas it conveys.”

As for my thoughts, having spent well over two years now researching and debating the issue with anyone willing to listen, I am quite pleased with the ultimate decision of the Court. However, I find at least one key question went unanswered: the “no-use barred” argument. Past challenges to the Constitutionality of 2(a) have failed because courts have reasoned that a denial of registration is not a denial of use. Trademark owners are still very much entitled to use their unregistered trademarks. While I firmly believe that a denial of registration creates a financial disincentive that makes speech more difficult though not barring it outright, I would have liked to see some guidance from the highest court on this issue.

In the aftermath of Tam, perhaps we will see more disparaging trademarks making their way into the streams of commerce. Perhaps we will see future litigation over the related “scandalous” and “immoral” provisions. But I believe that the most important thing to remember is that just because the First Amendment prevents government restrictions on speech does not relieve citizens of their responsibility to consider the effects of their words. Just because something can be said does not necessarily mean that it should be said. I’m looking at you, Washington Redskins.

* You can read the full opinion here.


March (TM) Madness

Trademark Law

This week I filled out my bracket for the NCAA’s Men’s Basketball Tournament based entirely on my incredibly limited knowledge of basketball and my incredible love for a certain school where I got my law degree (Go Nova!). As is only fitting, I shall present my Final Four predictions via registered trademarks that the universities either now own or have since abandoned.

Drum roll please. . .



Any guesses on who I have winning the whole thing?

Note: The United States Patent and Trademark Office appreciates being credited with content gleaned from their site (and rightly so). So, thank you, USPTO!

SCOTUS & The Slants 

Trademark Law

On September 29, 2016, the Supreme Court of the United States granted certiorari in the case of Lee v. Tam – the appeal from the CAFC decision in In Re Tam, which struck down the disparagement provision of Section 2(a) of the Lanham Act as violating the First Amendment. The Supreme Court declined to hear the Washington Redskins’ (procedurally unorthodox) appeal as well, despite the football team’s insistence that they were better situated to argue the case.
The two cases present slightly different issues (the Redskins had their previously-registered mark cancelled while The Slants were denied registration at the outset) but are nevertheless linked. Should The Slants prevail and should the disparagement provision be deemed unconstitutional, the result will be a victory for the Redskins as well.
The granting of certiorari reignited debate amongst trademark commentators as to the merits of the case. In observing this, I can discern two primary issues that seem to become blurred as they are debated.
The first issue is the constitutional issue, the legal issue. Does the disparagement provision violate the First Amendment by denying trademark registration to marks which may disparage others? What is the proper legal test or framework to analyze the issue? Are trademarks purely commercial speech? What are the purposes of constricting the protection of commercial speech?
The second issue is the social, cultural, policy issue. Should the government be placing a seal of approval by way of the ® symbol on disparaging marks? What is the intent of the mark owner? What does it mean to reclaim a racial slur? What is the context of the mark? Is it right to name a band after a racial slur? Is it right to use Native Americans and a racial slur as branding for a football team?
It’s my contention that the issues are separate. I firmly believe that the first issue and the questions of constitutionality are all that may be properly considered by the Supreme Court here. However, the second issue should not be ignored. The social impact of words and phrases is an issue that the public should debate and that consumers should consider when deciding whether to attend concerts or football games.
First Amendment cases will almost always concern controversial speech by nature, but the legal and social issues can still be extricated from each other and the answer to one does not necessarily influence the answer to another. The conclusions that the Redskins mark is disparaging to Native Americans and that Section 2(a) is unconstitutional are not in conflict with each other. Should the disparagement provision be upheld, the social issue will continue to be blended with the legal issue in the Patent & Trademark Office. However, for now, the intentions of mark owners ought to be irrelevant in the Supreme Court, but openly discussed by the public.

Tweets & Trademarks & Team USA

Trademark Law

While the 2016 Summer Olympics in Rio came to a close at the end of last month, intellectual property conflicts arising out of the Games may just be beginning.

The United States Olympic Committee (USOC) has been reported as having been strictly enforcing their trademark rights via cease and desist letters. These C&Ds are warning non-sponsor companies to refrain from posting about the Olympics on their social media accounts – even when non-sponsors companies are simply tweeting out good luck to athletes or commenting on the Trials’ or Games’ results. Many of the tweets USOC would like to find actionable include hashtags such as “#RIO2016”, “#TEAMUSA”, and “#RIOREADY”.*

The USOC’s trademark rights are governed by the Ted Stevens Olympic and Amateur Sports Act, codified at 36 U.S. Code Section 220506. Under this act, the USOC has the exclusive rights to use the name “United States Olympic Committee”, the symbols of the committee’s events, the emblem of the committee, and the words “Olympic” and “Olympiad” (among others). See the USOC’s brand usage guidelines for more information. The act provides a cause of action against anyone who – without consent – uses these protected marks “for the purpose of trade, to induce the sale of goods or services” in such a way that the use tends to cause confusion or mistake, to deceive, or to falsely suggest a connection with the corporation or the corporation’s events.

Companies targeted by the USOC may dispute the elements of the claim – by claiming that the use was not for the purpose of trade, for example. Companies may also raise the defense of fair use.

There are two primary fair use defenses in trademark law: descriptive fair use and nominative fair use. Descriptive fair use is the defendant’s use of a plaintiff’s trademark in a non-trademark way. Nominative fair use arises where a defendant uses a plaintiff’s trademark to refer to the plaintiff’s goods or services – usually for the purpose of comparative advertising – and the defendant does nothing to suggest endorsement or sponsorship by the plaintiff.**

While it would be naive to think that companies tweet about current events with no expectation that their words will result in increased sales or, at the very least, good will of the company, the line between noncommercial comment and advertising seems hard to discern. In today’s social media driven world, the Internet is a valuable marketplace quite unlike storefronts or print advertising. As such, courts will have to evaluate claims of confusion as to source or endorsement with careful consideration of the context of the Internet and social media. While I believe companies should surely be allowed to comment upon current events without fear of an infringement lawsuit, I also recognize that speech by companies seems necessarily commercial and such comment has the potential to undermine the right of trademark owners to license their marks and receive sponsorship revenue.

Whether the C&Ds issued by USOC will evolve into lawsuits remains to be seen (at the time  I’m writing this post, anyway). However, it seems inevitable that the same issues will arise again in February 2017 when #superbowlLI tweets start making their way onto Twitter feeds.

*The protectable nature of hashtags as trademarks is a separate but related issue that I hope to write about soon.

**The full nominative fair use test provides that: (i) the product or service in question must be one not readily identifiable without use of the trademark, (ii) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

An Election Day Soundtrack

Trademark Law

(Note: this post is best read with some background music.)

During my freshman year of college, I decided to run for just about every student government position for which I was eligible. My campaigning methods – unbeknownst to me at the time – could have raised some intellectual property considerations, particularly in the world of trademark law. For one thing, my campaign posters featured the Yuengling Lager logo, which I had poorly altered to depict my own last name. (Side note: Using beer imagery to appeal to college voters is every bit as effective – albeit unimaginative – as one might think). In addition to my posters, I also included a clip of Tom Petty’s song “I Won’t Back Down” as background music for a short campaign video I posted online.

The use of songs by political candidates in their campaigns is cause for much controversy. The upcoming presidential elections have seen no shortage of recording artists opposing the use of their songs by candidates whom they do not wish to endorse. Steven Tyler recently spoke out against Donald Trump’s use of Aerosmith’s “Dream On” at campaign events. Rock band R.E.M. also had some choice words for Trump after he used their song “It’s the End of the World As We Know It” (incidentally one of my all-time favorite songs) during a rally concerning U.S. relations with Iran. Mike Huckabee angered the band Survivor when he appeared onstage with same-sex marriage opponent Kim Davis while “Eye of the Tiger” played in the background.

In 2009, the U.S. District Court for the Central District of California heard arguments on a motion to dismiss a claim by Jackson Browne against Senator John McCain. Browne opposed McCain’s use of his song “Running on Empty” in a campaign commercial attacking Barack Obama. The claim was for false association or endorsement under the Lanham Act (the primary source of federal trademark law). The court refused to dismiss the claim against McCain, reasoning that the Lanham Act indeed applies to noncommercial political speech and recognizing that McCain had failed to establish that there would be no likelihood of confusion as to endorsement by Browne. Because the issue before the district court was a motion to dismiss, the court did not need to answer other questions that would likely need to be answered in a case decided on the merits – chief among these being the question of whether a song may even receive protection as a registered trademark.

The McCain case eventually settled and, to the best of my knowledge, no court has made any definitive ruling as to the viability of these types of false endorsement claims. Perhaps eventually the law will become more settled as to whether recording artists may assert successful false endorsement claims against politicians. Until that time, artists may alternatively rely on copyright claims – but only if the song in question was not properly licensed. Additionally, popular recording artists can take comfort in using their considerable visibility to set the record straight as to which candidates they do or do not endorse.

Oh, and Tom Petty, if you’re reading this – thanks for the campaign help!