The First Amendment Walks into a Bar: Trademark Registration and Free Speech

Rebecca Tushnet*

Section 2 of the Lanham Act, the federal law governing trademarks, lists a number of bars that preclude registration of a trademark on the federal register.¹ These reasons include: the claimed matter is functional, meaning it affects the cost or quality of the underlying product or service; the claimed matter is merely descriptive, meaning that consumers don’t understand that it indicates source and instead think that it just describes some characteristic of the product; the claimed matter is deceptively misdescriptive, which is like descriptiveness except not true; the claimed matter is deceptive, meaning that the untruth would be material to consumers; the claimed matter is confusingly similar to an existing registered mark or mark in use in the United States; the claimed matter is the name, photo, or signature of a living person and there’s no written consent from that person to register the mark; the claimed matter is the flag or insignia of a nation or state or other U.S. political subdivision; the claimed matter creates a false association with people or institutions; the claimed matter is a geographic indication for wine or spirits but identifies a place other than the origin of the goods; and, last but not least, the claimed matter is scandalous, immoral, or disparaging.

The constitutionality of section 2 is now in doubt. Washington’s football team had its disparaging marks cancelled, a decision upheld by a district court in mid-2015 and now on appeal to the Fourth Circuit.² But in December 2015, the Federal Circuit, en banc, held that section 2(a)’s disparagement bar was unconstitutional in the case of Simon Tam, an Asian-American seeking to register an anti-Asian slur in order to reclaim its negative meaning.³ The government apparently agrees that this holding also invalidates section 2(a)’s scandalousness bar,⁴ and the Supreme Court granted certiorari to review the decision in September 2016.

The Federal Circuit’s In re Tam decision drew on significant developments in First Amendment doctrine. For example, earlier in 2015, in Reed v. Town of Gilbert,⁵ the Supreme Court struck down a city’s sign regulations on the theory that they were content-based and didn’t survive strict scrutiny. The rule suggested by Reed is that all state regulations of speech that depend on an evaluation of the content of the speech to determine whether the regulation has been violated are content-based and must survive strict scrutiny. Section 2 is almost nothing but content-based.

This Article analyzes the First Amendment arguments against section 2(a)’s disparagement bar with reference to the consequences of any invalidation on the rest of the trademark statute. My fundamental conclusions are that In re Tam is wrongly reasoned even given the Supreme Court’s increased scrutiny of commercial speech regulations, and that to hold otherwise and preserve the rest of trademark law would require unprincipled distinctions within trademark law. More generally, the Supreme Court’s First Amendment jurisprudence has become so expansive as to threaten basic aspects of the regulatory state; the result of subjecting economic regulations such as trademark registration to strict First Amendment scrutiny shows the damage that can be done thereby.

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© 2016 Rebecca Tushnet. Individuals and nonprofit institutions may reproduce and distribute copies of this Article in any format at or below cost, for educational purposes, so long as each copy identifies the author, provides a citation to the Notre Dame Law Review, and includes this provision in the copyright notice.

*Professor of Law, Georgetown. Thanks to Enrique Armijo, Jack Balkin, Deven Desai, James Grimmelmann, Mark Lemley, Glynn Lunney, Lisa Ramsey, Fred Schauer, Mike Seidman, Jessica Silbey, Mark Tushnet, participants at the Harvard Faculty Workshop, the Free Expression Scholars Conference at Yale, William & Mary’s Student Intellectual Property Symposium, and the American University-Washington College of Law’s Trademark Works in Progress event.

1 Lanham Act § 2, 15 U.S.C. § 1052 (2012).

2 Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015). In this Article, I have chosen to use the name of Washington’s professional football team only where others use it in quotes or titles, or as a reference to non-human objects such as potatoes; I have used the name of Simon Tam’s band because I accept his intent to reclaim the term. The Notre Dame Law Review makes every effort to avoid printing obscenities and racial slurs unless, as in some instances in this Article, they are essential to the integrity of the piece. The judgment calls about what words have to be evoked by asterisks and context indicate the implementation difficulties of policing “scandalous” and “disparaging” marks, but, as I will argue below, difficulty is not itself constitutional invalidity.

3 In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), cert. granted sub nom. Lee v. Tam, 2016 WL 1587871 (U.S. Sept. 29, 2016) (No. 15-1293).

4 Beth A. Seals, Further Erosion to Section 2(a) of the Lanham Act—What’s Left?, Lexology (Jan. 27, 2016), http://www.lexology.com/library/detail.aspx?g=6bd23dd3-0c57-4cd9-a3 7b-a0208892dbe4 (discussing a Department of Justice letter brief stating that “the reasoning of Tam requires the invalidation of Section 2(a)’s prohibition against registering scandalous and immoral marks as well . . . .” (quoting Letter Brief of U.S. Dep’t. of Justice at 2, In re Brunetti, No. 2015-1109 (Fed. Cir. filed Jan. 21, 2016), http://src.bna.com/cd6)).

5 135 S. Ct. 2218, 2224 (2015).