Dean Rodney A. Smolla, Delaware Law School, Widener University
September 23, 2015

I have written previously on two pending trademark disputes involving the denial or cancellation of trademark registration on the grounds that the marks are “disparaging.”  The first was In re Tam,1  in which a panel of the United States Court of Appeals for the Federal Circuit refused to grant registration to an Asian-American rock group calling itself “The Slants.”  The second was the decision of the United States District Court for the Eastern District of Virginia in Pro-Football, Inc. v. Blackhorse,2 in which the court sustained the cancellation of the Washington Redskins mark.

Both of these cases are now entering a new stage of appellate review.  In Tam, the entire Federal Circuit has agreed to take the case en banc, to specifically address the question of whether the ban on disparaging marks in 15 U.S.C. §1052(a) violates the First Amendment.  In Pro-Football the district court’s decision in now on appeal to the Fourth Circuit.3

In my prior essays on the issue I focused on whether or not trademark registration is properly understood as “government speech,” and thus not subject to First Amendment limitation, or whether the fact that the bestowal of trademark registration status should be regarded as “privilege” and not a “right,” thereby permitting the government to attach the condition that the mark not be disparaging as a prerequisite for approval.  I argued that trademark registration is not government speech, and that the so-called “right-privilege distinction” is no longer sound constitutional law.

In this essay I turn to a question I have not previously addressed in considering these intriguing disputes.  If the speech at issue, trademark registration, is not “government speech,” then what, exactly, is it?  More specifically, to ask a question that both appellate courts will ask, what is the appropriate standard of First Amendment review that should be applied in these disparaging-mark cases?

The government might argue that the refusal of the Patent and Trademark Office to grant registration is a form of regulation of “commercial speech,” and thus if not “government speech,” is at most subject to the “intermediate scrutiny” standard used in commercial speech jurisprudence, the “Central Hudson”test.”4  In Central Hudson, the Public Service Commission of New York ordered electric utilities to cease all advertising that “promotes the use of electricity.”  The Supreme Court held the restriction unconstitutional, and in the process of doing so announced what is now a famous four-part test:

At the outset, we must determine whether the expression is protected by the First Amendment.  For commercial speech to come within that provision, it at least must concern lawful activity and not be misleading.  Next, we ask whether the asserted governmental interest is substantial.  If both inquiries yield positive answers, we must determine whether the regulation directly advances the governmental interest asserted, and whether it is not more extensive than is necessary to serve that interest.5

Because trademarks are themselves aspects of trade and commerce, a court might be tempted reflectively to assume that all regulation of trademarks in the federal Lanham Act or state common law is regulation of “commercial speech.”  Trademarks are, after all, commercial identifiers, the symbols and words by which companies distinguish and identify their brands.

It does not necessarily follow, however, that all government regulation of trademarks is properly reviewed under the intermediate scrutiny commercial speech Central Hudson standard. I believe the more sound view is that the action of the PTO should be reviewed under the “strict scrutiny” standard – the robustly protective First Amendment standard under which regulation of the content and viewpoint of speech is routinely struck down.

In modern First Amendment law, the Supreme Court has shown increasing willingness to apply higher levels of First Amendment scrutiny when either the law at issue discriminates on its face on the basis of content, or when the underlying motivation of the government appears grounded in censorship.  A good example is Reed v. Town of Gilbert, Arizona,6 involving a relatively mundane form of speech – laws governing signage for events – where the Supreme Court demonstrated this sensitivity.

In Reed,the Courtmade it clear that a law may be subject to strict scrutiny as a content-based regulation even in the absence of any illicit intent, or motive to discriminate.  “We have thus made clear that “‘[i]llicit legislative intent is not the sine qua non of a violation of the First Amendment,’” and a party opposing the government “need adduce ‘no evidence of an improper censorial motive.’” 7  Elaborating, the Court stated that “[a]lthough ‘a content-based purpose may be sufficient in certain circumstances to show that a regulation is content based, it is not necessary.’”8   A party challenging a law as content-based essentially has two bites at the apple, and may trigger strict scrutiny either on a showing of facial discrimination, a motive to censor, or both.  Most importantly, once facial discrimination is shown, an innocent motive will not redeem the law and spare it from strict scrutiny.  “In other words, an innocuous justification cannot transform a facially content-based law into one that is content neutral.”9

In a similar vein, the Supreme Court has repeatedly emphasized that heightened judicial scrutiny may be triggered by laws that burden speech based on its content, even though the law may not effect an outright ban on the speech.  “Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content.”10

Consider, now, as measured against these standards, the wording of the Lanham Act provision at issue, 15 U.S.C. §1052(a).  The statute denies trademark registration to marks that meet all the normal requirements for trademark registration, but:

Consists of or comprises immoral, deceptive, or scandalous matter; or matter 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….11

Expression that is “immoral” or “scandalous” or that disparages or brings into contempt or disrepute “persons, living or dead, institutions, beliefs, or national symbols” is normally what freedom of speech is all about.  On its face, the statute is as content-based and viewpoint-based as a law can get.  And the government’s motive in passing the law is surely illicit as well – grounded in disagreement with the message communicated by the mark.  Indeed, it is not anything about the commercial content of the mark that those provisions of the statute address.  While the prohibition of “deceptive” marks may well be commercial regulation, it is not the commercial message, but the immoral, or scandalous, or disparaging, or contemptuous elements of the mark that the remainder of the law burdens.  This is in effect a concession that some trademarks may function both as commercial identifiers and convey some noncommercial political, artistic, cultural, or religious meaning – the very meanings that render them disparaging or contemptuous.  The regulation of that aspect of a trademark, the aspects deemed by the government to make “The Slants” or the “Redskins” disparaging, is regulation of a political and social message, nothing more or less.  On its face and in its intent, the statute thus discriminates on the basis of content and viewpoint.  It ought not be measured under the intermediate standard applicable to commercial speech, but the strict scrutiny applicable to noncommercial speech, the vast array of speech in the marketplace on topics such as politics, culture, religion, science, or art.  Under that measure, the actions of the PTO ought to be deemed unconstitutional.