WHAT’S IN A NAME?: MATAL V. TAM & THE RIGHT TO OWN DISPARAGING WORDS

I. INTRODUCTION

In June 2017, the Supreme Court decided Matal v. Tam,1 a rare case in which intellectual property and First Amendment law collided.2 The principal question was whether the Lanham

Act’s (“the Act”) Disparagement Clause was constitutional.3 While the Court had declined to answer this question with previous plaintiffs, such as the Washington Redskins (“the Redskins”), the Court granted certiorari to Simon Tam (“Tam”) and his Asian-American bandmates to decide whether the U.S. Patent and Trademark Office (“PTO”) had wrongly denied trademark registration for their band name: The Slants.4

Tam and his bandmates (collectively “The Slants”) are more sympathetic plaintiffs than the Washington Redskins: they are Asian-Americans reclaiming an outdated term derogatory to

Asian-Americans.5 The Redskins, on the other hand, operate under a long-reviled racist term for

Native Americans, and at best, a slim minority of their members is Native American.6 The

Slants won their Supreme Court case, but the Court left unresolved the next question, which is what this decision means for less-than-sympathetic parties like the Redskins.7

This paper will explore what rights individuals and organizations have in owning derogatory terminology. Part II provides the background of trademark registration criteria and benefits, a summary of the process to appeal rejected trademarks, an introduction to the Act and

Disparagement Clause, and a brief overview of First Amendment law. Part III provides a history

1 137 S. Ct. 1744 (2017). 2 See generally id. 3 See generally id. 4 See generally id. 5 See generally id. 6 Ian Shapira, A Brief History of the Word ‘Redskin’ and How it Became a Source of Controversy, WASH. POST (May 19, 2016), https://www.washingtonpost.com/local/a-brief-history-of-the-word-redskin-and-how-it-became-a- source-of-controversy/2016/05/19/062cd618-187f-11e6-9e16-2e5a123aac62_story.html?utm_term=.ef0c18f81d1f. 7 See Michael McCann, Why the Redskins Scored a Victory in the Supreme Court’s Ruling in Favor of The Slants, SPORTS ILLUSTRATED (June 19, 2017), https://www.si.com/nfl/2017/06/19/washington-redskins-name-slants- trademark-supreme-court.

1 of Redskins litigation, highlighting previous disputes over the Disparagement Clause. Part IV introduces Matal v. Tam and provides its procedural history. Part V explores whether the Court could or should have provided a carve-out for those members of the potentially “disparaged” group reclaiming otherwise disparaging words. Ultimately, I conclude Tam was rightly decided, and both The Slants’ and the Redskins’ trademarks must stand according to First Amendment freedom of speech principles.

II. BACKGROUND

A. CRITERIA AND BENEFITS OF TRADEMARK REGISTRATION

Trademark protection is born the first time a mark is used in commerce.8 The first individual to use a mark “acquires rights to that mark.”9 Trademarks are a form of intellectual property and differ from copyrights in that copyrights are necessarily expressive, while trademarks do not have this requirement.10 Trademark owners have common law rights in these marks upon commercial use, but often pursue trademark registration with the federal government for particular benefits.11 Trademark owners apply for trademark registration with the PTO.12

Should the PTO deny trademark registration, owners can appeal to the Trademark Trial and

Appeal Board (“TTAB”).13 If the TTAB affirms the PTO’s rejection, an owner can then appeal to a circuit court, and then to the Supreme Court.14

8 See B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 1299 (2015). 9 Id. (citing 2 J. McCarthy, TRADEMARKS AND UNFAIR COMPETITION § 16:1 (4th ed. 2014)). 10 Compare 17 U.S.C.A. § 102 with 15 U.S.C.A. § 1051. 11 Christina S. Loza, Matal v. Tam: Disparaging Trademarks, Like The Slants, Can Be Registered Trademarks, 59 SEP ORANGE COUNTY LAW, 24, 25 (2017) (citing B&B Hardware, 135 S.Ct. at 1300; Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 209 (2000); 15 U.S.C. §§ 1065, 1115(b), 1124 (2017). 12 See, e.g., In Re Tam, 108 U.S.P.Q.2d 1305 (Sept. 26, 2013). 13 See id. 14 See, e.g., In re Tam, 808 F.3d 1321 (Fed. Cir. 2015); Matal v. Tam, 137 S. Ct. 1744 (2017).

2 The Act was enacted to “safeguard the public and mark holders by providing a national system to register and protect trademarks” through infringement suits.15 Trademarks can be denied for several reasons, most often for potentially causing consumer confusion.16 Section

2(a) of the Act provides grounds for denial of trademarks – grounds that greatly differ from the overall goal of consumer protection.17 Section 2(a) is comprised of three different clauses – two of which are of note.18 The first, referred to as the “Scandalousness Clause,” allows refusal of registration of “immoral, deceptive, or scandalous” marks.19 The second, the Disparagement

Clause at issue in Matal v. Tam, restricts marks that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”20

The Act does not define the word “disparage” or “disparagement.”21 Black’s Law

Dictionary relevantly defines “disparage” as “[t]o degrade in estimation by disrespectful or sneering treatment.”22 Disparaging seems to involve both an intent to “degrade” and a more subjective measure of how the audience would receive the comment. Despite the lack of statutory guidance, courts have used a two-tiered framework to determine whether a mark is disparaging: (1) determining the likely meaning of the mark and (2) determining whether that meaning would be “disparaging to a substantial composite of the referenced group.”23

15 Elizabeth Brabb, Will Simon Tam and The Slants Bring An End to the Disparagement Provision Within Section 2(A) of the Lanham Act? One Rock Band’s Fight for Free Speech, 69 BAYLOR L. REV. 194, 195–96 (2017) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 n.15 (1992) (Stevens, J., concurring)). 16 Id. at 196. 17 Id. 18 See 15 U.S.C. § 1052(a). See generally Matal v. Tam, 137 S. Ct. 1744 (2017). 19 15 U.S.C. § 1052(a). See also Loza, supra note 11. 20 15 U.S.C. § 1052(a). See generally Tam, 137 S. Ct. 1744. 21 See Brabb, supra note 15 at 197 (citing 15 U.S.C. §§ 1051–1127). 22 Disparage, BLACK’S LAW DICTIONARY (10th ed. 2014). 23 In Re Tam, 785 F.3d 567, 569 (Fed. Cir. 2015).

3 B. FREEDOM OF SPEECH

When analyzing content-based regulations of speech, courts test regulations under strict scrutiny: there is a presumption in favor of speech and a presumption against viewpoint or content regulation.24 Some categories of speech are “unprotected,” such as incitement and fighting words.25 Other categories of speech, like commercial speech, are given less protection under intermediate scrutiny, and government speech is not regulated by the First Amendment’s free speech clause.26

Government speech and commercial speech are especially relevant in this case, as the government attempted to classify trademark registration under these categories of speech.27

Government speech is not regulated by the First Amendment’s free speech clause, thereby allowing for no limit on regulations of that speech.28 To be considered government speech, it must be reasonable for the public to believe there is a connection between the speech and the government.29 For example, in Walker v. Texas Division, Sons of Confederate Veterans, Inc., the

Supreme Court decided license plate designs were government speech because the public likely and reasonably can conclude the state has endorsed a specific message.30 In the case at hand, the government argued that trademark registration should be considered government speech because

24 See Tam, 137 S. Ct. at 1763 (internal citations omitted). 25 See, e.g., Brandenburg v. Ohio, 395 U.S. 444 (1969); Chaplinsky v. New Hampshire, 315 U.S. 568 (1942); Cohen v. California, 404 U.S. 876 (1971); R.A.V. v. City of St. Paul, Minnesota, 505 U.S. 377 (1992). 26 See Central Hudson Gas & Elec. Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980); Pleasant Grove City, Utah v. Summum, 555 U.S. 460 (2009); Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015). 27 See Tam, 137 S.Ct. at 1759–60, 1763–65. 28 See Summum, 555 U.S. at 467. 29 See Tam, 137 S. Ct. at 1759–60 (citing Johanns v. Livestock Marketing Ass’n, 544 U.S. 550, 561 (2005); Summum, 555 U.S. at 464; Walker, 135 S.Ct. at 2246–47). 30 See Walker, 135 S. Ct. at 2248–49 (quoting Summum, 555 U.S. at 472).

4 trademark registration is similar to the license plate registration in Walker, and that the

Disparagement Clause was thereby constitutional.31

Commercial speech, on the other hand, is subject to an intermediate scrutiny test outlined in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n.32 Under this test, “a restriction of speech must serve ‘a substantial interest’ and it must be ‘narrowly drawn’” for it to pass constiutional muster.33 In Tam, the government attempted to persuade both the Federal Circuit

Court of Appeals and the Supreme Court that: (1) trademark registration should be considered commercial speech, and (2) the government interests advanced by the Disparagement Clause were substantial and narrowly tailored to pass the Central Hudson test.34

III. OPENING ACTS: WASHINGTON REDSKINS TRADEMARK LITIGATION

The Washington Redskins have litigated two main cases dealing with whether their trademark violates the Disparagement Clause: Harjo35 and Blackhorse.36

The Harjo plaintiffs comprised seven Native Americans who “petitioned the Trademark

Trial and Appeal Board . . . to cancel the registrations of six trademarks used by the Washington

Redskins.”37 The TTAB determined that the trademark using the word “redskins” violated the

Disparagement Clause and granted the petition to cancel the Redskins’ trademark.38 Pro-

Football filed a civil suit, hoping to reinstate the Washington Redskins’ trademark registrations.39

It argued that “section 1052(a) violates the First and Fifth Amendments to the U.S. Constitution

31 Tam, 137 S. Ct. at 1759–60. 32 See generally Central Hudson, 447 U.S. 557. 33 Tam, 137 S. Ct. at 1763 (citing Central Hudson, 447 U.S. at 564–65) (internal quotes omitted in original). 34 Id. at 1763–65. 35 415 F.3d 44 (D.C. Cir. 2005). 36 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014). 37 Pro-Football, Inc. v. Harjo, 415 F.3d 44, 45 (D.C. Cir. 2005). 38 See Gabriela M. Kirkland, An Offensive Mark on Offensive Lines: The Question of Violating the First Amendment Through the Cancellation of the Washington Redskins’ Trademark, 44 HASTINGS CONST. L.Q. 479, 488 (2017). 39 See Kirkland, supra note 38; Harjo, 415 F.3d at 45.

5 both facially and as applied by the TTAB.”40 The District of Columbia Circuit Court of Appeals remanded to the District Court for the District of Columbia to make determinations as to whether laches barred the Native Americans’ claim.41 Although other appeals have since been taken, the

Supreme Court ultimately denied certiorari in 2009 and left the question of the Disparagement

Clause’s constitutionality unanswered.42

While Harjo was being litigated, five Native Americans commenced the Blackhorse litigation to cancel the Redskins’ trademark registration due to its alleged violation of the

Disparagement Clause.43 Following the two-step analysis to determine whether the trademark was disparaging, the TTAB first determined that the meaning of the mark as a reference to

Native Americans and that the second prong was met.44 Therefore, the TTAB ordered the trademark cancelled.45 Ultimately, the parties settled after Matal v. Tam was decided.46

47 IV. THE SLANTS: “THE BAND WHO MUST NOT BE NAMED”

In deciding what to name their entirely Asian-American band, Tam and his bandmates asked several people what all Asian people had in common, and the prevailing answer was slanted eyes.48 Intrigued by the answer, and attempting to reclaim the old derogatory term

“slant,” the band decided to name themselves The Slants and pursue a trademark.49

40 Harjo, 415 F.3d at 45. 41 See id. at 50. 42 See Harjo v. Pro-Football, Inc., 558 U.S. 1025 (2009). 43 Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q. 1080 at *1, *8–*9 (T.T.A.B. 2014). 44 Id. at *10–*25. See id. at *29. 45 Id. at *29. 46 See Nicole Narea, Native Americans Drop Redskins Suit After High Court Ruling, SCOTUS BLOG (June 30, 2017), https://www.law360.com/articles/940256/native-americans-drop-redskins-suit-after-high-court-ruling. 47 THE SLANTS, THE BAND WHO MUST NOT BE NAMED (CD-ROM, Jan. 11, 2017). 48 Joe Coscarelli, Why the Slants Took a Fight Over Their Band Name to the Supreme Court, N.Y. TIMES (June 19, 2017), https://www.nytimes.com/2017/06/19/arts/music/slants-name-supreme-court-ruling.html. 49 Coscarelli, supra note 48. See also Kory Grow, Inside Asian-American Group the Slants’ Supreme Court Free- Speech Win, ROLLING STONE (June 20, 2017), http://www.rollingstone.com/music/news/inside-asian-american- band-the-slants-scotus-win-w488615.

6 In 2011, the PTO rejected The Slants’ trademark, citing the Act’s Disparagement

Clause.50 It argued that The Slants’ name, especially viewed in conjunction with the band’s ethnicity and Asian imagery used on its website, was disparaging to Asian-Americans.51 The

PTO cited the definition of “slant” in a popular slang dictionary, UrbanDictionary.com, and an instance of Miley Cyrus pulling her eyes back at an awards show as evidence that the term was offensive and in violation of the Disparagement Clause.52 However, The Slants maintained that not a single Asian-American had complained about their name during their nation-wide tours.53

Although Tam appealed this rejection to the TTAB, his case was dismissed “for failure to file a brief and the application was deemed abandoned.”54

Tam filed a second trademark application for The Slants, “essentially identical . . . as in the [first application].”55 Although Tam removed Asian motifs from his second application, this second trademark was also rejected by the PTO, which cited the same evidence

(UrbanDictionary.com, Miley Cyrus, etc.).56 In response, The Slants compiled evidence from

Asian-American groups around the country to show support of the band’s use of the word “slant” and appealed to the TTAB.57 The TTAB noted the ethnicity of the band and that “in its advertising . . . promotes the ‘likely meaning’ of the mark to be people of Asian descent.”58 The

TTAB said the band’s Asian-American background provided the context for the word to be considered disparaging; Tam interpreted this to mean that the more Asian-American they were,

50 See In Re Tam, 108 U.S.P.Q.2d 1305 at *1 (Sept. 26, 2013); 15 U.S.C. § 1052(a). 51 See In Re Tam, 108 U.S.P.Q.2d 1305 at *4. See also FEDTM 85472044 (Nov. 14, 2011). 52 See Coscarelli, supra note 48. 53 See Simon Tam, The Slants on the Power of Repurposing a Slur, N.Y. TIMES (June 23, 2017), https://www.nytimes.com/2017/06/23/opinion/the-power-of-repurposing-a-slur.html. 54 See In Re Tam, 785 F.3d 567, 568 (Fed. Cir. 2015). 55 Id. 56 Id. 57 Id. 58 In Re Tam, 108 U.S.P.Q.2d 1305, at *5 (Sept. 26, 2013).

7 the more offensive their name became.59 Although the band was “willing to take on the disparaging term . . . in what may be considered an attempt not to disparage, but rather to wrest

‘ownership’ of the term from those who might use it with the intent to disparage . . . does not mean that all members of the referenced group of persons share applicant’s view.”60 Therefore, the TTAB affirmed the PTO’s refusal to register The Slants’ trademark.61

A. SETTING THE STAGE: EARLY LITIGATION

Tam appealed to the Federal Circuit, arguing that the TTAB erred finding their name disparaging and that the Disparagement Clause was unconstitutional on both void for vagueness and free speech grounds.62 As to the first question – whether the mark was disparaging – the court applied the two-part test: (1) what the likely meaning of the mark is and (2) whether that meaning would be disparaging ‘to a substantial composite of the referenced group.’63 The court concluded that “The Slants” likely referred to “people of Asian descent” and that that meaning would be disparaging “to a substantial composite of people of Asian descent.”64 The court also concluded that the Disparagement Clause was not unconstitutionally vague.65 Therefore, the court affirmed the PTO and TTAB’s decisions.66 The court relied on McGinley, concluding that

“the refusal to register a mark under § 2(a) does not bar the applicant from using the mark, and

59 Compare Tam supra note 53 (“It was as if because we were Asian . . . we could not trademark the name the Slants.”) with In Re Tam, 108 U.S.P.Q.2d 1305 at *6 (Sept. 26, 2013). 60 In Re Tam, 108 U.S.P.Q.2d 1305, at *5 (Sept. 26, 2013). 61 See id. 62 See generally In Re Tam, 785 F.3d 567 (Fed. Cir. 2015). 63 Id. at 569 (recounting two part test for potentially disparaging terms). 64 Id. at 570–71. “The fact that the term ‘slants’ has some innocuous meanings – and that some trademarks have issued with those innocuous meanings – does not foreclose the possibility that the term may also be used in an offensive manner, even when the non-disparaging meanings are more common.” Id. 65 Id. at 572 (internal citations omitted). 66 See generally id.

8 therefore does not implicate the First Amendment” and did not conduct a free speech analysis, focusing instead on the statutory analysis under the Disparagement Clause.67

On April 27, 2015, the Federal Circuit sua sponte ordered an en banc rehearing to determine whether “the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate[s] the First Amendment.”68 On rehearing, the court explained that it erroneously relied on McGinley, which was outdated given the development of First Amendment jurisprudence.69

The court then conducted a freedom of speech analysis for the first time.70 First, it determined that the Disparagement Clause was a content-based regulation, and therefore “presumptively unconstitutional,” barring any narrowly tailored compelling state interests.71 It reasoned that the

PTO utilized the Disparagement Clause to permit only positive references to groups.72 The government attempted to argue that trademarks constituted commercial speech and government speech, to lower the standard from strict scrutiny.73 However, the court deemed trademark registration private speech and that the Disparagement Clause sought to regulate expressive, not commercial components.74 Additionally, the court held that trademark registration is not a government subsidy.75 Finally, the court reasoned that the government’s proposed “compelling state interests” were neither substantial nor narrowly tailored and therefore could not pass the

67 In Re Tam, 600 Fed. Appx. 775 (Fed. Cir. 2015). In Re Tam, 785 F.3d at 572. 68 In Re Tam, 600 Fed. Appx. 775 (Fed. Cir. 2015). 69 See id. at 1333–34. 70 See id. at 1334–58. 71 See id. at 1334. 72 See id. at 1337. 73 See id. at 1337–57. 74 See id. at 1348. “The PTO’s processing of trademark registrations no more transforms private speech into government speech than when the government issues permits for street parades [or] copyright registration certificates . . . To conclude otherwise would transform every act of government registration into one of government speech and thus allow rampant viewpoint discrimination.” See id. at 1337–39. 75 See id. at 1353.

9 Central Hudson test.76 Thus, the court held the Disparagement Clause unconstitutional on free speech grounds, vacated the determination that The Slants’ trademark was unregisterable, and remanded the case back to the TTAB.77

B. THE HEADLINER: SUPREME COURT’S DECISION

The Supreme Court granted certiorari on September 29, 2016 and heard oral arguments for the case on January 18, 2017.78 The Court, on June 19, 2017, ruled that the Disparagement

Clause was unconstitutional on First Amendment freedom of speech grounds.79

i. PRIVATE OR GOVERNMENT SPEECH?

The Court held that trademarks are private, not government, speech.80 The Court analyzed the public policy concerns if it were to conclude that trademarks were government speech.81 Justice Alito, writing for the majority, asserted: “[i]f private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”82 The Justices seemed particularly worried about the implications of deeming trademarks government speech on copyright registration.83 Although the government tried to distinguish copyrights from trademarks, the

Justices remained unconvinced.84 Justice Alito distinguished previous government speech caselaw from the facts in Tam: “the federal registration of trademarks is vastly different from the

76 See id. at 1356–57 (“Moreover, at the level of generality at which the government invokes ‘racial tolerance,’ it is hard to see how one could find that § 2(a) ‘directly and materially advance[es]’ this interest and is narrowly tailored to achieve that objective.”) (alterations in original) (internal citations omitted). 77 See id. at 1358. 78 See Matal v. Tam, 137 S. Ct. 1744 (2017). 79 See Matal v. Tam, 137 S. Ct. at 1765. 80 See id. at 1760. 81 See id. at 1757–60. 82 Id. at 1758. 83 See id. at 1760. 84 See id.

10 beef ads in Johanns,85 the monuments in Summum,86 and even the specialty license plates in

Walker.87 Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine.”88 The

Court thought it unreasonable for individuals to equate government approval to government speech and the implications too unweidly and far-reaching.89 Therefore, the Court decided it untenable and unrealistic for trademarks to be considered government speech.90

ii. GOVERNMENT SUBSIDIES

Not only did the Court conclude that trademarks are not government speech, but also not a government subsidy.91 The government argued that trademark registration, a product of examination and approval by the government, bestows benefits and therefore constitutes a government subsidy.92 However, the Court noted that parties seeking trademark registration – not the government – pay for the application.93 Additionally, there are a plethora of government services that the Court was not willing to deem government subsidies based on the same logic.94

The Court also rejected the government’s proposal to judge the constitutionality of the

Disparagement Clause under a new “government program” doctrine.95 This new doctrine

“would apply to ‘government-program’ cases” and would essentially “merge[] our government- speech cases and . . . [government] subsidy cases in an attempt to construct a broader doctrine”

85 Johanns v. Livestock Marketing Assn., 544 U.S. 550 (2005). 86 Pleasant Grove City v. Summum, 555 U.S. 460, 467 (2009). 87 Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015). 88 Matal v. Tam, 137 S. Ct. 1744, 1760 (2017) (citations added). 89 See id. at 1758 (“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently . . . . And it is providing Delphic advice to the consuming public.”). 90 See id. 91 See id. at 1760–61. 92 See id. at 1760. 93 See id. at 1761 (citing 37 C.F.R. § 2.6(a)(1)). 94 See id. 95 See id.

11 for trademark registration.96 The Court attempted to draw parallels between the proposed government program doctrine and limited public forum cases, but ultimately concluded the

Disparagement Clause failed when “analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.”97 The Disparagement Clause failed here because of a fundamental of First Amendment law: “the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”98

iii. COMMERCIAL SPEECH

Finally, the government argued that trademarks should be considered commercial speech, and thus subject to intermediate scrutiny.99 The Court declined to determine whether trademarks should be considered commercial speech because they concluded that even if it were, the

Disparagement Clause could not even pass the Central Hudson test.100 The interests advanced by the government failed by being too broadly drawn and not being substantial interests.101

The government first claimed an interest in “preventing speech expressing ideas that offend.”102 However, as the Court had analyzed earlier, this interest counters basic First

Amendment principles preventing content-based regulations.103 As Justice Alito highlighted,

“the proudest boast of our free speech jurisprudence is that we protect the freedom to express

‘the thought that we hate.’”104 Secondly, the government argued that it had a substantial government interest in “protecting the orderly flow of commerce.”105 However, the

Disparagement Clause cast the net too wide to pass Central Hudson’s “narrowly drawn”

96 Id. at 1761–62. 97 Id. 98 Id. (internal citations omitted). 99 Id. 100 Id. at 1764. 101 See id. at 1764–65. 102 Id. at 1764. 103 See id. 104 Id. (citing United States v. Schwimmer, 279 U.S. 644, 655 (1929)). 105 Id.

12 element.106 The Court concluded: “[T]he disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination . . . . It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ . . . [I]t is a happy-talk clause . . . . [I]t goes much further than is necessary to serve the interest asserted.”107

Consequently, the Court was hesitant to call this commercial speech and provide a slippery slope for “endanger[ing]” free speech.108 The difficulty in distinguishing between commercial and non-commercial speech also proves problematic, especially in the intellectual property arena.109

For example, both trademarks and copyrighted works could have elements of both commercial and expressive speech; distinguishing “mostly commercial” or “mostly expressive” speech would be taxing on courts.110

Unable to consider trademark registration commercial speech or government speech, the

Court held that the Disparagement Clause violated the First Amendment because it facially discriminated based on content and viewpoint, failing strict scrutiny review.111

V. ANALYSIS: WHAT DOES MATAL V. TAM MEAN FOR THE WASHINGTON REDSKINS?

Clearly, Tam and his bandmates did not have an intent to degrade Asian-Americans with their band name, but instead intended to empower them.112 This subjective measure of how

Asian-Americans would receive the phrase was precisely what the PTO and the TTAB wrestled

106 See id. at 1764–65 (emphasis in original). 107 Id. 108 See id. 109 See id at 1765. 110 See id. at 1764. 111 See id. at 1757–65. 112 See Tam, supra note 53.

13 with when applying and reviewing the Disparagement Clause.113 Thus, they were unable to distinguish what was a case of reclaiming a derogatory word and what was disparaging.

Although there was a framework for how to interpret the Disparagement Clause, it remained difficult for the PTO, a governing body analyzing thousands of trademarks, to draw a line in the sand as to what was disparaging and what was not.114 This was especially difficult if the PTO, and particularly the trademark examiner, was drawing lines for other people – for other races, religions, sexes, sexual orientations, disabilities, and other immutable characteristics.115

While Tam traveled across the country, met with Asian-American leaders, and compiled evidence that the word would not be considered disparaging to many Asian-Americans, the PTO still determined the word would be considered “disparaging to a substantial composite of” Asian-

Americans.116

Showing that “a substantial composite of the referenced group” is not offended by use of a term provides deeper issues in implementing the Disparagement Clause.117 Tam himself could not speak for all Asian-Americans if he were to say he was not offended by use of the word

“slant.” But how much evidence does he need to provide to show that a “substantial” portion of

Asian-Americans, a group of approximately 20 million, is not offended by “slant”?118 How many people out of that estimated 20 million constitutes a “substantial composite”? Although

Tam claims he was able to provide evidence that 90% of Asian-Americans were not offended by

113 See Matal v. Tam, 137 S. Ct. 1744, 1756 n.5 (2017) (“The PTO has acknowledged that the guidelines ‘for determining whether a mark is scandalous or disparaging are somewhat vague and the determination of whether a mark is scandalous or disparaging is necessarily a highly subjective one.”) (internal citations omitted). 114 See id.; In Re Tam, 785 F.3d 567, 569 (Fed. Cir. 2015). 115 See Tam, 137 S. Ct. at 1765 n.5. 116 See Tam, supra note 53. 117 In Re Tam, 808 F.3d 1321, 1331 (Fed. Cir. 2015) (internal citations omitted). 118 Gustavo López, Neil G. Ruiz, & Eileen Patten, Key Facts About Asian Americans, A Diverse and Growing Population, PEW RESEARCH CENTER (Sept. 8, 2017), http://www.pewresearch.org/fact-tank/2017/09/08/key-facts- about-asian-americans/.

14 the use of the word, this still was not enough.119 This substantiality portion of analyzing trademarks under the Disparagement Clause provides another layer of uncertainty and subjectivity for the PTO and TTAB to struggle with.120

In the case of the Redskins, the intent of using the word “redskin” is unclear. Certainly, however, it differs from The Slants’ usage of an otherwise derogatory word because it has hardly been argued that the use of the word was meant to reclaim the word or empower Native

Americans.121 Also, the actors are strikingly different – the Redskins are not Native American and face difficulties in speaking themselves to what is and is not disparaging to Native

Americans. Native Americans have long decried the use of the word as the football team’s name and the large accompanying movement to strip the team of the name evinces that the use of the word is disparaging to a substantial part of the Native American community.122 This is a prime example of disparaging trademarks that the Disparagement Clause sought to regulate.

i. CAN WE PROVIDE A CARVE-OUT FOR THOSE WHO WANT TO RECLAIM WORDS?

Matal v. Tam is especially poignant in today’s world, where the power of words – especially words weighed down by their history – is at an all-time high.123 We can think about the n-word, for example, which provokes incredibly strong reactions from society.124 We have,

119 See Tam, supra note 53. 120 See Nina Totenberg, In Battle Over Band Name, Supreme Court Considers Free Speech and Trademarks, NPR (Jan. 18, 2017), http://www.npr.org/2017/01/18/510310945/in-battle-over-band-name-supreme-court-considers-free- speech-and-trademarks. 121 See Dan Barry, A Heated Linguistic Debate: What Makes ‘Redskins’ a Slur?, N.Y. TIMES (May 21, 2016), https://www.nytimes.com/2016/05/22/sports/football/redskins-poll-prompts-a-linguistic-debate.html. 122 See id. 123 See Jia Tolentino, Charlottesville and the Effort to Downplay Racism in America, NEW YORKER (Aug. 13, 2017), https://www.newyorker.com/culture/jia-tolentino/charlottesville-and-the-effort-to-downplay-racism-in-america; Slate Staff, Hate in America, SLATE (Aug. 14, 2017), http://www.slate.com/articles/news_and_politics/politics/2016/12/hate_in_america_a_list_of_racism_bigotry_and_a buse_since_the_election.html. 124 See Aja Romano, YouTube Star PewDiePie Used The N-Word in a Live Stream, After Months of Denying He’s Racist, VOX (Sept. 11, 2017), https://www.vox.com/culture/2017/9/11/16288826/pewdiepie-n-word- playerunknown-battlegrounds.

15 as a society, ideas of who can say the n-word, but even then, we tend to recoil from hearing it.125

What makes us uncomfortable is not necessarily only the word itself, but also who says the word.

Individuals are typically not condemned (or less likely to be condemned as harshly) for using epithets (racial or otherwise) that refer to the minority group to which they belong.126 The

Slants’ usage is a perfect example of this. They are sympathetic plaintiffs by virtue of the fact that they are Asian-American individuals trying to reclaim a word that was once used against them and other Asian-Americans.127 But we are quick to condemn individuals or organizations, such as the Redskins, that are not in the minority group at issue and still use disparaging words or words steeped in bigotry.128

Can the government respond to this human reaction to silence speech that makes us uncomfortable because of its racist history? As Tam illustrated, the answer is no. Should the government respond and regulate this speech, though? My answer is also no. As the practice of applying the Disparagement Clause to trademark registration applications has shown us, the ability of the government to accurately, efficiently, and appropriately make decisions regarding what is disparaging is questionable. Although there is a dichotomy between (1) people in a minority group using words previously used as insults against their minority group and (2) people not in a minority group using words previously used as insults against a specific minority group, inclusion in a minority group alone does not paint the entire picture. Disparagement is

125 Gene Demby, Who Can Use The N-Word? That’s The Wrong Question, NPR (Sept. 6, 2013), http://www.npr.org/sections/codeswitch/2013/09/06/219737467/who-can-use-the-n-word-thats-the-wrong-question; Ta-Nehisi Coates, In Defense of a Loaded Word, N.Y. TIMES (Nov. 23, 2013), http://www.nytimes.com/2013/11/24/opinion/sunday/coates-in-defense-of-a-loaded-word.html. 126 Compare Romano, supra note 124 with Demby, supra note 125. 127 See Bill Chappell, The Slants Win Supreme Court Battle Over Band’s Name in Trademark Dispute, NPR (June 19, 2017), http://www.npr.org/sections/thetwo-way/2017/06/19/533514196/the-slants-win-supreme-court-battle- over-bands-name-in-trademark-dispute (“Kids would pull their eyes back in a slant-eyed gesture to make fun of us . . . . I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.”). See also James Michael Nichols, Can Gay Men Still Say The Word ‘Faggot’?, HUFFINGTON POST (May 28, 2017), https://www.huffingtonpost.com/entry/gay-men-slang-faggot_us_59273469e4b01b9a5937704d. 128 See Coates, supra note 125; Barry, supra note 121.

16 not as “black and white” as simple membership in a minority group, as members of minority groups may still maliciously use disparaging words against others.129 Both establishing and implementing a test to identify the intent of the speaker would be difficult, if not impossible.

Additionally, how we perceive words themselves is constantly in flux; the slur of yesterday can be the “politically correct” term of today.130 Consider the term “queer,” which was once considered a slur, but is becoming a reclaimed word synonymous with gender identity.131

First Amendment jurisprudence has provided analyses for determining the constitutionality of government regulation of speech based on whether the regulations were content-based or content-neutral.132 It has rightly declined to provide a lens for courts to determine constitutionality based on the identity of the speaker, which raises a host of other constitutional issues such as Equal Protection.133 Providing a carve-out for individuals hoping to reclaim derogatory words would offend First Amendment principles in an intolerable manner, practically regulating speech based on both content and speaker. The PTO in Tam rightly noted that “[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.”134 Because of the Disparagement Clause’s broad nature, there was a real concern about chilling speech purely because it was unsavory.

129 See Nasshell Rainford, Racism In High School: ‘I’m Not Oreo Or Ghetto – I’m Just Being Me’, HUFFINGTON POST (Jan. 16, 2012), https://www.huffingtonpost.com/2012/01/15/racism-in-high-school-im-_n_1208065.html; Kim Tran, Asian Americans Aren’t ‘Basically White’ – Here Are 5 Ways Racism Hurts Us, EVERYDAY FEMINISM (June 5, 2016), https://everydayfeminism.com/2016/06/racism-against-asian-americans/. 130 See, e.g., Sidney Chase, The Word “Queer” is Only Offensive If You’re a Jerk, HUFFINGTON POST (Jan. 24, 2015), https://www.huffingtonpost.com/sidney-chase/the-word-queer-is-only-offensive-if-youre-a- jerk_b_6517666.html. 131 See, e.g., Chase, supra note 130. 132 See Brandenburg v. Ohio, 395 U.S. 444 (1969); Cohen v. California, 403 U.S. 15 (1971). 133 See generally Craig v. Boren, 429 U.S. 190 (1976); Loving v. Virginia, 388 U.S. 1 (1967); Brown v. Board of Ed. Of Topeka, Shawnee County, Kan., 347 U.S. 483 (1954). 134 Matal v. Tam, 137 S. Ct. 1744, 1754 (2017) (citing Trademark Manual of Examining Procedure § 1203.03(b)(i) (Apr. 2017), p. 1200–50, http://tmep.uspto.gov).

17 Within the context of Tam, the Supreme Court correctly decided not to make a carve-out for individuals wanting to reclaim words because the Disparagement Clause facially violated the

First Amendment. Trademark registration should not be considered government speech and therefore subject to strict scrutiny. The public policy implications would be far-reaching and a reasonable person simply would not consider the approval of a trademark to be government speech. As Justice Alito hypothesized, if trademarks would be considered government speech, the government would be deemed to be saying thousands of conflicting and confusing things.135

Additionally, the Disparagement Clause would not even pass the Central Hudson test if it were considered commercial speech.136 The government’s interest in regulating potentially disparaging speech runs in the face of First Amendment jurisprudence.137 Even if the government’s interest was substantial and legitimate, the Disparagement Clause is far too broad to regulate that speech under Central Hudson.138 Facially, the Disparagement Clause hoped to shut down disparaging viewpoints.139 As such, it failed strict scrutiny review and violated the

First Amendment. The idea of regulating speech based on content and the identity of the speaker

(if one were to subscribe to the idea of carve-outs for individuals seeking to reclaim derogatory words) is itself problematic because it offends our notions of free speech.

ii. TOUCHDOWN FOR THE WASHINGTON REDSKINS?

135 Id. at 1759 (“For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)?”) (internal citations omitted). 136 See Central Hudson Gas & Elec. Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980). 137 See Tam, 137 S. Ct. at 1757 (internal citations omitted). 138 Compare Central Hudson, 447 U.S. at 564–65 (concluding restriction of speech must be “narrowly drawn”) with 15 U.S.C. § 1052(a). 139 See Loza, supra note 11.

18 The Supreme Court made clear that Matal v. Tam only applied to the Disparagement

Clause, and not to the Lanham Act as a whole.140 The Scandalousness Clause in Section 2(a), under which “immoral, deceptive, or scandalous” marks can be denied trademark registration, was not mentioned in the opinion and conceivably provides an avenue by which the PTO can deny trademarks.141 This avenue will likely not prove successful for offended plaintiffs because the same subjectivity that underpinned the Disparagement Clause is present in the

Scandalousness Provision.142 Like the terms in the Disparagement Clause, “immoral,”

“deceptive,” and “scandalous” are not defined in the Lanham Act.143 The PTO and TTAB may shirk from denying trademarks under this clause based on the holding in Tam. As one scholar noted, plaintiffs and the PTO will have to differentiate the Scandalousness Clause from the

Disparagement Clause after Tam, and courts have yet to decided cases dealing with this issue.144

Otherwise, Tam may have ripple effects on trademark law – one of which is the constitutionality of the Redskins’ trademark. While Tam recognizes this unpleasant and unintentional side-effect of his fight in the Supreme Court, he recognizes the importance of freedom of speech.145 If our ideals are to protect all speech, regardless of whether we loathe the ideas behind the speech or not, then both The Slants’ trademark and the Redskins’ trademark must stand – not one or the other. While the Lanham Act’s Disparagement Clause hoped to

140 See Tam, 137 S. Ct. at 1763 n.16 (“We leave open the question whether this is the appropriate framework for analyzing free speech challenges to provisions of the Lanham Act.”). 141 15 U.S.C. § 1052(a); Loza, supra note 11. See also Gary Albert, Trademark Law – Federal Circuit Holds En Banc That Excluding Disparaging Trademarks Violates First Amendment – In Re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (En Banc), 49 SUFFOLK U.L.REV. 513, 519–20 (2016). 142 See Albert, supra note 141. 143 15 U.S.C. §§ 1051–1072. 144 See Loza, supra note 11 (alluding to In Re Brunetti, a case “pending before the Federal Circuit for violating the scandalousness provision under Section 2(a)”). 145 See Grow, supra note 49; Coscarelli, supra note 48. “It’s a win for all marginalized groups. It can’t be a win for free speech if some people benefit and others don’t . . . . You can’t say you want to shut down the conversation for other people, because that doesn’t advance progress. No one builds better communities by shutting people out.” Id.

19 regulate morality, it is ultimately up to society’s values and norms to determine what words and types of speech should be used in the United States’ marketplace of ideas.

20