Historical Perspectives & Reflections on "matal v. Tam" and the Future of Offensive Trademarks

• Publication year: 2017

Historical Perspectives & Reflections on "Matal v. Tam" and the Future of Offensive Trademarks

Russ VerSteeg
New England Law, Boston

HISTORICAL PERSPECTIVES & REFLECTIONS ON MATAL V. TAM AND THE FUTURE OF OFFENSIVE TRADEMARKS

Russ VerSteeg^*

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TABLE OF CONTENTS

I. INTRODUCTION..........................................................................................110

II. MATAL V. TAM...........................................................................................113

A. OVERVIEW.............................................................................................113
B. SUMMARY OF MATAL V. TAM............................................................ 115

1. Overview...........................................................................................115
2. Justice Alito's Opinion......................................................................115
3. Justice Kennedy's Concurring Opinion...............................................122
4. Justice Thomas's Concurring Opinion................................................124

C. IMMEDIATE IMPACT............................................................................ 124

III. FOUNDATIONS OF TRADEMARK LAW AND THE FIRST AMENDMENT............................................................................................... 127

A. CORE TRADEMARK PRINCIPLES........................................................ 127

1. Trademarks as Property....................................................................127
2. Trademarks as Protection from Fraud and Deceit.............................134
3. Trademarks and Reputation.............................................................136
4. Trademarks and Religious Sensitivity................................................140

B. CORE FREE SPEECH PRINCIPLES....................................................... 143

IV. A PROPOSAL.................................................................................................148

V. CONCLUSION...............................................................................................156

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I. INTRODUCTION

On June 19, 2017, the United States Supreme Court rendered its decision in Matal v. Tam (Tam).¹ Writing for the Court, Justice Alito held that the "may disparage" provision of § 2(a) of the Lanham Act (disparagement clause) is unconstitutional because it violates the Free Speech clause of the First Amendment.² In an article published in the summer of 2016, Blackhawk Down or Blackhorse Down? The Lanham Act's Prohibition of Trademarks that "May Disparage" & the First Amendment, I argued that this was the likely outcome for many reasons.³ My principal arguments were that, if analyzed under traditional First Amendment principles, the disparagement clause is both overbroad and vague,⁴ and that, if analyzed under commercial speech principles, the provision fails to pass muster under the Central Hudson test.⁵

Justice Alito embraced reasoning similar to mine, focusing on the First Amendment to explain why the provision is unconstitutional.⁶ Blackhawk Down or Blackhorse Down? and Justice Alito's opinion both examine the complex nexus of the intersection between the First Amendment and trademark law. The Court's opinion synthesizes doctrine and policy that bridge these two critical fields—namely Constitutional Law and Intellectual Property Law. But this Article steps back, "zooms out," to consider not the complexities of those branches of law, but rather the "big picture" of the broader foundations of them.

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To this end, this Article considers the Supreme Court's Tam decision, drawing primarily (but by no means exclusively) on the perspectives of five historical and jurisprudential scholars in particular: Sir William Blackstone;⁷ Professor Frank

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Schechter;⁸ Senator Sam Ervin;⁹ Professor Jerome Hall;¹⁰ and, Professor Grant Gilmore.¹¹ This is not a random assortment of strangers. Rather, each man

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offers a unique point of view regarding the role of law in general, and each also adds expertise to the conversation that informs our modern-day understanding of the more specific foundations of the legal principles of trademark law and constitutional law.

Part Two of this Article summarizes the Supreme Court's opinion in Tam. This part also speculates about the immediate ramifications of the decision for the future of registration of marks that some individuals and groups deem offensive. Justice Alito invokes trademark history as a means of providing context for his decision.¹² On the theory that historical perspective often helps us better understand and confront contemporary issues, Part Three follows Justice Alito's lead and reaches into the roots of law to provide perspective regarding several legal principles and relationships that provide the foundations for trademark law and policy. Part Three explores the historical and jurisprudential foundations of both trademark law and the First Amendment, analyzing, in particular, the tension inherent in the disparagement clause of § 2(a) and the freedom of speech, guaranteed by the First Amendment. This Part relies primarily on the observations of Blackstone, Schechter, and Ervin. Part Three closes by taking an even broader view of these issues, reflecting in particular on a more macroscopic jurisprudential analysis. Part Four proposes one potential solution to relieve some of the tension between those concerned that offensive trademarks will overtake the American marketplace versus those who wish to champion the cause of freedom of speech. The Conclusion briefly summarizes the main points of the Article.

II. MATAL V. TAM

A. OVERVIEW

The Tam decision has little to do with the types of trademark issues that ordinarily concern the general public. The general public, which typically gets its

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information about trademarks from reports in the media regarding infringement disputes, probably knows far more about cases concerning trademark infringement rather than the subtleties surrounding the First Amendment and the technical aspects of § 2 of the Lanham Act.¹³ Section 2(a) of the Lanham Act contains provisions that explain why certain trademarks may be disqualified from federal registration.¹⁴ But before even considering the topic of trademark registration, it is helpful to first examine the very basis of legal protection for trademarks. In the history of trademark law, scholars and judges have addressed the threshold issue of whether the legal protections for trademarks should be focused primarily on an owner's property rights in a mark or on the public's interest in protection from fraud and deceit.¹⁵ To a certain extent, these twin concerns, prominent in the history of the evolution of trademark doctrine, are also germane to the Tam decision. A person who applies to register a mark that may disparage persons, institutions, or beliefs is primarily interested in protecting his property rights by the acquisition of additional protections afforded to federal registrants.¹⁶ And, although neither fraud nor deceit are true concerns relating to marks that may disparage, nevertheless the perceptions of certain members of the public are a vital interest; specifically relevant are the perceptions of the people who feel disparaged. Consequently, these two bedrock interests—the interests of trademark owners in protecting their property rights and the interests of the members of the public—are also key interests affected by the Tam decision. Hence, it will be useful to keep in mind these two important interests.

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B. SUMMARY OF MATAL V. TAM

1. Overview. After the United States Patent and Trademark Office (PTO) denied registration for "The Slants" as a service mark, pursuant to § 2(a) of the Lanham Act, which prohibits registration of marks that "may disparage . . . persons . . .," the Trademark Trial and Appeal Board (TTAB) affirmed the PTO examining attorney's refusal of registration.¹⁷ The Court of Appeals for the Federal Circuit (CAFC), en banc, later reversed the TTAB, holding that the disparagement clause violates the Free Speech clause of the First Amendment.¹⁸ Then, shortly after the United States Supreme Court granted certiorari to hear the Tam case, the Fourth Circuit Court of Appeals suspended its consideration of the Blackhorse case, pending the outcome of Tam.¹⁹

Justice Alito wrote three sections of the Tam opinion that hold the disparagement clause unconstitutional.²⁰ In short, he writes, "this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."²¹ Justice Kennedy wrote a two-part concurring opinion (joined by Justices Ginsburg, Kagan, and Sotomayor), concurring in part and concurring in judgment.²² Two sections of Justice Alito's opinion are unanimous—Part I and Part III.A. Only Justices Roberts, Breyer, and Thomas joined in Parts III.B, III.C, Part IV, and the introductory paragraph of Part III. Justice Thomas did not join Part II, and he wrote a brief concurring opinion.

2. Justice Alito's Opinion. Justice Alito begins Part I.A by briefly describing relevant trademark statutes and some historical and jurisprudential background of trademark law.²³ Part I.B then explains a number of nuances regarding protection for unregistered trademarks and details the benefits provided by federal registration of a mark on the Principal Register.²⁴ Part I.C follows by outlining the operation of § 2(a) of the Lanham Act and the role it plays in

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establishing the doctrine that applies to determine whether an applicant's mark qualifies for registration on the Principal Register.²⁵ Here, Justice Alito also identifies § 2(a)'s disparagement clause as the causus belli in this case:

At issue in this case is one such provision, which we will call "the disparagement clause." This provision prohibits the registration

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