Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part I

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis.

As a drum roll leading up to that discussion, and since there is so much to digest in the recent Supreme Court decision in Tam, I thought I’d do a series of posts on the decision and its implications, beyond what I’ve already written.

In this first installment, my focus will be on critiquing (as a trademark type) the opinion of the Court, that is, the portion of the decision written by Justice Alito, to which all seven of the other Justices agreed (the ninth, Justice Gorsuch, did not participate in the decision).

In a nutshell, my principal problem with the Court’s opinion is that all eight Justices have conflated the federal government’s issuance of a Certificate of Registration with the underlying applied-for trademark. The Court ignored that the meaning of each is distinct.

The meaning of the underlying trademark is one thing, determined by how the relevant public perceives and understands the applied-for mark. As an aside, the Court seemed more interested in Mr. Tam’s intentions in using an admitted racial slur as a trademark.

Yet, the meaning of the Certificate of Registration is quite different. It signifies that the federal government has approved the applied-for trademark for registration and issued a federal registration “in the name of the United States of America.”

It would be easier to accept and respect the decision of the Court had it acknowledged and attempted to explain why Congress is powerless under the Commerce Clause to regulate what the USPTO may issue “in the name of the United States of America.”

Perhaps the Court’s conflation in Tam should be no surprise, as a few years ago, the unanimous Supreme Court in B&B Hardware, essentially conflated the right to register a trademark with the right to use the trademark.

Another concerning aspect of the Court’s opinion is how it seriously overstated what was at issue in Tam. It held that in denying federal registration to a mark consisting of a racial slur, the disparagement clause of Section 2(a) of the Lanham Act “violates the Free Speech Clause of the First Amendment” because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

To be clear, the only speech even potentially banned under Section 2(a) of the Lanham Act relates to forbidding the use of the federal registration symbol — ® — next to the racial slur, because that symbol may not be used, unless a Certificate of Registration has been issued for the mark in question.

To the extent the ® symbol constitutes speech at all, the symbol ought to be considered government speech (which is outside First Amendment scrutiny), since federal governmental approval is required in order to use it in commerce.

The Court missed the point when it stated the obvious: “Trademarks are private, not government speech.” The better and more relevant question would have asked whether the ® symbol is purely private speech. Seems obvious to me it’s not.

While the underlying trademark has a certain meaning and constitutes private speech, the federal government’s issuance of a Certificate of Registration and allowing the use of the ® symbol to signify this fact, cannot fairly be considered private speech. Instead, by definition, it connotes governmental approval.

On this point, the Court was unconvincing when it cited a 55-year old concurring opinion from the late Federal Circuit Judge Giles Rich for the proposition “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”

In that case, Judge Rich claimed, at least in 1962: “The purchasing public knows no more about trademark registration than a man walking down the street in a strange city knows about legal title to the land and buildings he passes.”

In my experience, all sorts of folks know that the ® symbol cannot be used without first obtaining approval from the federal government. Goodness, Forbes writes about it, National Law Journal, admitted non-lawyers, and a multitude of others do too, including us.

Friends, what do you think, do the folks understand and appreciate that the ® symbol is special and cannot be used without first obtaining approval from the federal government?

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