Prof. Doug Lichtman, UCLA School of Law
April 23, 2015

Every year, I close my “survey” intellectual property course by spending a few days talking about trademark law.  My main message is that trademark law is a legal regime designed to facilitate clear communication.  I point out that it would be monstrously difficult were I required to order “that bubbly, brown, watery liquid that has a modest amount of caffeine and tastes just slightly better than bathwater” instead of simply requesting a can of Coke.  And I emphasize that easy communication in turn creates incentives for firms to deliver consistent, and presumably high-quality, products and services, because consumers who like a given product or service will be able to ask for it by name in the future.

These end-of-term classes then usually follow the conventional routine.  I talk about the various ways that the state and federal governments allow a firm to acquire control over a given word, color or sound.  I ask the students to think about the kinds of confusion that the law should, and typically does, stop.  And then I survey the intuitive limitations on a trademark owner’s rights, for example the doctrines that allow one firm to use another firm’s marks in comparative advertising, and the rules that take away trademark protection in instances where a mark has gone generic and hence is no longer able to reliably identify a given product or a given source.

Until this year, however, I have never really talked about trademarks as a way of engaging in political discussion or social commentary.  Sure, I always threw in a few seconds of discussion about Aqua’s song “Barbie Girl” – why that song was so popular I will never understand – but I never thought to engage the issue more seriously than that.  Until this year.

What attracted my attention this year was last week’s hot-off-the-presses ruling in In Re: Simon Shiao Tam.  The case, decided by the Federal Circuit, raised the question of whether the United States Patent and Trademark Office properly refused to register the trademark “THE SLANTS” for use by an Asian-American rock band.  The Trademark Office took the position that this particular mark would be interpreted as a disparaging reference to people of Asian descent, and the examiner thus exercised his discretion under Section 2(a) of the Lanham Act to deny registration to marks that “may disparage … institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  The Federal Circuit affirmed, waving off the applicant’s argument that this use was not actually a disparaging use, and also rejected a variety of procedural and constitutional challenges.

The decision is ironic for two reasons.  First, as Judge Moore recognized in a quasi-dissent, this use was not, in fact, disparaging.  The record made clear that the band at issue was using the offensive phrase in order to “reclaim” or “take ownership” of the otherwise mean-spirited language, and the band itself was not furthering any explicit or implicit negative message.

Second, as Judge Moore also emphasized, this entire approach to trademark law seems to violate the First Amendment.  Think about it: The government refused to register this trademark not because the words for some reason fail to serve the purpose of identifying a particular firm’s products or services, but because the government believes that these words might communicate a political or social message that the government thinks inappropriate.  Shockingly, prior Federal Circuit cases had allowed this governmental regulation of content despite the First Amendment, and so Judge Moore felt compelled to follow that precedent.

It is unclear as of this writing whether the Federal Circuit will take this particular case en banc and reverse its own prior rulings.  But, as I talked this over with my class this week, we became convinced that the Federal Circuit should.  Disparaging trademarks can be appropriately punished by patrons who might decide to take their dollars elsewhere.  And thoughtless trademark holders will surely find that their rivals will point out any mean-spirited affronts.  But the government, as Judge Moore wrote in her quasi-dissent, is not allowed to police public discourse and reject words that serve the underlying purpose of trademark law but also happen to communicate some degree of social or political commentary.  Or, as the ACLU put it in a blog post supporting registration of the similarly controversial Washington Redskins trademark: In an instance where a proposed mark is potentially offensive, the proper response from the Trademark Office is to tell the applicant that “you’re not wrong” on the law, you’re “just an a**hole.”  Indeed.