Federal Circuit on Disparaging Trademarks: “The Slants”

by Gordon Hull

An important trademark and First Amendment case was decided in the Federal Circuit yesterday. In it, the Court ruled in favor of Simon Tam, who named his band “The Slants.” When he attempted to register the band name as a trademark, the Patent and Trademark Office (PTO) rejected the mark as “disparaging,” arguing that the First Amendment does not allow government to disfavor speech that it disapproves of the message it contains. Per the Court:

“The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.”

The Court thus rules that the PTO needs to allow the mark to be registered (for a quick blogpost, see here). A lot of people think this case has ramifications for whether the Washington "Redskins" should be allowed to keep their trademark registrations (they were canceled by the 4^th Circuit; the Washington Post has a long list of rejected marks here). The conflict between the circuits raises the odds of Supreme Court review.  I wrote about the Redskins case when it came out, and a lot of what I said there applies here. In that post, I expressed some support for the PTO, because I wonder if the case shouldn’t be framed as viewpoint discrimination so much as whether one has a constitutionally protected right to a government subsidy for speech that it does not endorse.  But it's not a comfortable road to travel, as I based my argument on abortion cases, Rust v Sullivan in particular, that I wish were decided the other way.

The Tam case offers another wrinkle. First, however, remember that whether or not one is allowed to register the trademark is not the same as whether or not one is allowed to use a term in commercial speech, or claim a given term as one’s intellectual property – up to and including suing others for using it. Denying the Redskins the right to the little ® rather than the “TM” isn’t going to help any vendors of unauthorized merchandise bearing the team’s logo. Tam’s case however addresses a point of concern in trademark scholarship: what about people who want to reappropriate disparaging terms by applying them to themselves? For example, the PTO initially refused to register “Dykes on Bikes” (though that was eventually reversed). When Tam calls his band “The Slants,” he is doing just that, and making a statement about social racism.

The most obvious distinction between the Slants and the Redskins, then, is who is doing the appropriation. In the case of the Slants, it’s a member of the population disparaged by the remarks, whereas the Redskins name is an act of cultural expropriation, repeating a disparaging mark for the sake of bringing a lot of money to some white people (viz. the team owners).  So it’s easy to distinguish the cases on theoretical grounds, even if there’s a very difficult identity-politics debate at the end of that line.  It’s harder to distinguish the cases on First Amendment grounds, however. Whether this is a good thing or a bad thing of course depends on your view of free speech.

But I still think – and I confess to not having read the entire 110 page Tam opinion – there’s a legitimate framing question, which is whether this is a question of a viewpoint being suppressed, or a right that one’s speech be subsidized. The Supreme Court recently ruled that Texas’ refusal to allow Confederate flag license plates was ok, because the license plates were government speech, and the government couldn’t be forced to say something with which it fundamentally disagreed (note this logic is congruent with the abortion cases, which get positive mention in the license plates case. On the other hand, it’s the same logic that allows anti-choice plates but not pro-choice ones). That logic is more consistent with the subsidy view, although one would clearly need to make some arguments to align license plates and trademarks registrations. But both involve governmental imprimatur on speech, and the expenditure of governmental resources.

In sum, choose your poison. Sonia Katyal has a great paper on how we need to view trademarks intersectionally (a la Crenshaw): at the intersections of public and private, of the production and consumption of social meaning, and of commerce and expression, they don’t fit any of our traditional categories of speech very well. And in that, they are instructive.