MATAL V. TAM: DISPARAGING TRADEMARKS, LIKE THE SLANTS, CAN BE REGISTERED TRADEMARKS by CHRISTINA S. LOZA Background way, it doesn’t matter. I couldn’t and/or services from those of anoth- his case revolves around get that mark, even though I er source. Trademark owners have whether a trademark can be could get a mark saying that all rights in their marks as soon as they registered before the United politicians are virtuous, or that are used in commerce without any States Patent and Trade- all Democrats are virtuous. need, necessarily, for trademark reg- mark Office (USPTO) even The point is that I can say good istration before the USPTO. With though the mark is disparag- things about something, but I that said, registering a trademark ing. The Lanham Act prohib- can’t say bad things about some- with the USPTO is a good idea for Tits the registration of many kinds of thing.1 a number of reasons, including: (1) marks, but in this case, preventing And so, as of June 19, 2017, in Matal constructive notice of a claim of the registration of disparaging marks v. Tam, the Supreme Court held 8-0 ownership, (2) evidence of validity, directly challenges the First Amend- that you can say good and bad things ownership, and exclusive rights, (3) ment’s Free Speech Clause. During in your registered trademark because incontestability after five years of “[V]iewpoint discrimination,” as in the disparagement clause, is “forbidden.” . “Giving offense is a viewpoint.” oral arguments, Justice Kagan raised not being able to do so “offends a registration, and (4) ceasing impor- the free speech issue in the Lanham bedrock First Amendment principle: tation of infringing articles into the Act as: Speech may not be banned on the United States.3 [I]t precludes disparagement ground that it expresses ideas that There are many reasons a trade- of Democrats and Republicans offend.” 137 S. Ct. 1744, 1751 (2017). mark may not be registered before alike, and so forth and so on, but the USPTO. Most commonly, marks it makes a very important dis- Court Proceedings are refused for being descriptive of tinction, which is that you can In 2011, Simon Shiao Tam, a United the goods, or confusingly similar to say good things about some per- States citizen and lead singer of a band another mark already registered in son or group, but you can’t say named The Slants, filed for the mark connection with identical or related bad things about some person THE SLANTS in connection with goods or services. At issue in Tam, or group. So, for example, let’s “entertainment in the nature of live the mark THE SLANTS was refused say that I wanted a mark that performances by a musical band.”2 registration in 2012 based on a pro- expressed the idea that all poli- Any trademark filed before the vision in the Lanham Act called “the ticians are corrupt, or just that USPTO is a source identifier that disparagement clause.”4 This provi- Democrats are corrupt. Either distinguishes one source’s goods sion prohibits the registration of a 24 ORANGE COUNTY LAWYER www.ocbar.org SEPTEMBER 2017 25 trademark “which may disparage . Amendment’s Free Speech Clause.10 tions may only extend “as far as the persons, living or dead, institutions, In an opinion by Justice Alito, the interest it serves.”19 Here, the inter- beliefs, or national symbols, or bring judgment of the Federal Circuit was ests served by the disparagement them into contempt, or disrepute.”5 affirmed by the Supreme Court.11 clause essentially are that the govern- The USPTO applies a two-part In Tam, the government argued ment wants to (1) prevent offensive test when determining whether a that, by granting registration of marks speech, and (2) allow for an orderly proposed mark is disparaging: after an examination process before flow of commerce. But, “hateful (1) What is the likely meaning the USPTO, trademarks essentially speech” is the “proudest boast of our of the matter in question, tak- become government speech. This is free speech jurisprudence.”20 Hence, ing into account not only dic- summarily rejected as “far-fetched” the Court stated that this clause is tionary definitions, but also the by the Court, stating that: just too broad, reaching any person, relationship of the matter to the [i]f the federal registration of group, or institution, alive or dead; other elements in the mark, the a trademark makes the mark “[i]t is not an anti-discrimination nature of the goods or services, government speech, the federal clause; it is a happy-talk clause.”21 and the manner in which the government is babbling prodi- Far be it for lawyers to engage only mark is used in the marketplace giously and incoherently . say- in happy talk. Accordingly, to avoid in connection with the goods or ing many unseemly things . the endangerment of free speech, the services; and expressing contradictory views . Court held that the disparagement (2) If that meaning is found to refer . unashamedly endorsing a vast clause violated the Free Speech Clause to identifiable persons, institu- array of commercial products of the First Amendment. tions, beliefs or national symbols, . And it is providing Delphic whether that meaning may be dis- advice to the consuming public.12 Implications paraging to a substantial compos- Thus, “[t]rademarks are private, not As a trademark attorney, a positive ite of the referenced group.6 government, speech.”13 side of this opinion was the removal The USPTO must make a “prima The government then argued, of an uncertainty that always lin- facie showing that a substantial com- without success, that trademarks are gered as disparaging marks showed posite, . of the referenced group government subsidized speech or up in my practice. Years ago, a cli- would find the proposed mark . that a “new doctrine” should apply ent had used and had a mark regis- to be disparaging in the context of to “government programs” like the tered for years, accidentally allowing contemporary attitudes.”7 Moreover, trademark registration process.14 The the mark’s registration to lapse. The though the trademark “applicant Court held that even though “some first USPTO attorney who exam- may be a member of that group or content- and speaker-based restric- ined and registered did not issue a has good intentions underlying its tions may be allowed,” “viewpoint disparagement refusal, presumably, use of a term does not obviate the discrimination,” as in the disparage- like myself, not knowing that the fact that a substantial composite ment clause, is “forbidden.”15 Spe- mark was an epithet. So, when I was of the referenced group would find cifically, “the clause evenhandedly retained to refile the mark, there was the term objectionable.”8 In this prohibits disparagement of all groups no indication that the client would case, Tam argues that he chose the . It denies registration to any mark receive a rejection under the dis- moniker “The Slants” to “reclaim” that is offensive to a substantial per- paragement clause. This time, the and “take ownership” of stereotypes centage of the members of any group. examining attorney at the USPTO about people of Asian ethnicity and But in the sense relevant here, that did know that this happened to be a that the band “draws inspiration for is viewpoint discrimination: Giving racial slur, and the mark was reject- its lyrics from childhood slurs and offense is a viewpoint.”16 ed. Sure, the client could continue mocking nursery rhymes.”9 Justice Alito further rejects the using it, but it was considered dis- Tam attempted to overcome the concept that trademarks are com- paraging and, as such, would not be refusal before the USPTO and mercial speech and as such, should endorsed by the USPTO. appealed to the Trademark Trial and be subject to “relaxed scrutiny” as set This exact sentiment is buried in Appeal Board (TTAB) without any forth in Central Hudson.17 Central Footnote 5 of the Opinion: “whether success. Eventually, the case ended Hudson stands for the proposition a mark is disparaging is highly sub- up before the Federal Circuit, which that restriction of speech must serve jective and, thus, general rules are found the disparagement clause a “substantial interest” and be “nar- difficult to postulate.”22 Google, of unconstitutional under the First rowly drawn.”18 Accordingly, regula- course, helps as we check out various 26 ORANGE COUNTY LAWYER sources to see if a word could be dis- scandalous slang.”25 This harkens (15) Id. at 1763. paraging or not. But, what if Google back to Footnote 5—is this a subjec- (16) Id. does not know or has conflicting tive standard? (17) Id. opinions? This case certainly takes Much like any good intellectual (18) Id. at 1764. care of that uncertainty as it relates property law professor, waiting anx- (19) Id. to the disparagement clause. iously for the Tam decision, this (20) Id. There is, of course, a concern that exact issue showed up on my final (21) Id. at 1765. the floodgates have been opened. exam. Except I had my students (22) Id. at 1756 n.5. Will every hateful person file marks respond to the refusal of the pending (23) USPTO, Exam Guide No. and begin filling our Trademark mark GRAB HER BY THE P--SY 01-16 Examination for Compliance Register with racial slurs? There is (Serial No. 87/338,492) currently with Section 2(a)’s Scandalous- certainly a chance. While I hate to in suspension in light of Tam and ness and Disparagement Provisions defend the hateful, it is likely that Brunetti.