SOME FIRST AMENDMENT IMPLICATIONS OF THE TRADEMARK REGISTRATION DECISIONS.

• Author: Rohr, Marc

1. INTRODUCTION II. THE BASICS OF AMERICAN TRADEMARK LAW III. THE FIRST AMENDMENT RULINGS A. Prior to Tam B. Tam C. Brunetti IV. IMPLICATIONS OF THE OPINIONS A. Viewpoint Discrimination B. Trademark Registration Restrictions 1. Might the "Minimal Burden" Approach Be Resurrected? 2. Is the Principal Register a "Limited Public Forum"? 3. Is Commercial-Speech Analysis Applicable? 4. Could a Ban on Registration of "Vulgar" Marks Be Upheld? 5. Are Other Bars to Trademark Registration Vulnerable to First Amendment Challenges? C. Is There a Future for the Concept of "Low-Value" Speech? V. CONCLUSION I. INTRODUCTION

   In two decisions rendered in two recent terms, the United States Supreme Court has struck down, as violative of the First Amendment, two provisions of the federal Lanham Act that barred the registration of certain kinds of trademarks. (1) In Matal v. Tam, (2) the Court invalidated the section of the statute that prohibited the registration of a mark that "[c]onsists of or comprises ... matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." (3) In Iancu v. Brunetti, (4) the Court invalidated another part of the very same statutory section, namely the prohibition of registration of a mark which "[c]onsists of or comprises immoral ... or scandalous matter." (5) The constitutional problem, in each case, was that the prohibition amounted to impermissible viewpoint discrimination. (6) But while the ruling in Tam was unanimous, the decision in Brunetti was not, and the multiple opinions written in Brunetti raise some important questions regarding (a) the constitutionality of other provisions of the Lanham Act (including possible amendments in the wake of Brunetti); and (b) the potential resolution of issues that may arise outside the narrow context of trademark registration.

   This article offers some preliminary thoughts concerning the possible implications of Tam and Brunetti. I begin with a brief primer on trademark law, for the benefit of readers who lack expertise therein.

2. THE BASICS OF AMERICAN TRADEMARK LAW

   To understand these decisions, one must have some minimal acquaintance with American trademark law. A mark serves as an indication of the source of goods or services, (7) and one acquires ownership of a mark by being the first to use it, in commerce, (8) in a particular location. (9) Ownership of a mark entitles one to prevent the use of a mark, by someone else, that is likely to create consumer confusion as to the source or sponsorship of that second user's mark (10) and the owner of a mark has that right under the common law of every state; (11) registration of the mark is not required. Registration is an option, however, both at the state (12) and federal level, and, as one would expect, registration provides certain benefits. At the federal level, one may apply for registration at the federal Patent and Trademark Office (PTO), (13) pursuant to the Lanham Act, and the application will be approved if the PTO is satisfied that the applicant is the first user of the mark, the mark has been used in interstate commerce, (14) and that it is otherwise eligible for federal registration. The primary criterion for eligibility is that the mark be "distinctive"-i.e., that it is capable of distinguishing the applicant's goods or services from those of others. (15) The Lanham Act sets out several categories of marks that are ineligible for registration. (16) Some of those categories bear a clear relationship to the overriding statutory goals of preventing consumer confusion or deception; (17) notably, one presumptively cannot register a mark that "so resembles a mark registered in the Patent and Trademark Office, or a mark ... previously used ..., as to be likely ... to cause confusion." (18) Other presumptively unregistrable marks, such as those that are "merely descriptive" (19) or "primarily geographically descriptive," (20) lack the requisite distinctiveness. (21) But some of the statutory bars to registration, (22) like those at issue in Tam and Brunett/, which date back to the Act's inception in 1946, serve other, unidentified policy goals. (23) Thus, for example, one cannot register a mark which consists of a national flag, (24) or (presumptively) the name of a deceased President of the United States during the life of his widow. (25)

   When federal registration is denied by virtue of one of these provisions, the mark owner may nonetheless continue to use the mark in commerce. (26) What, then, does a mark owner lose by failing to attain federal registration of a mark? Registration on the so-called "principal register" (27) confers a variety of benefits, most notably these: prima facie evidence of the validity and ownership of a mark, and the exclusive right to use it; (28) a nationwide right of priority with respect to the mark; (29) constructive notice, to the world, of the registrant's claim of ownership of the mark; (30) the possible attainment of "incontestability" of the mark; (31) and the right to use, with the mark, one of the forms of notice of registration set forth in the statute. (32) The essential point is that denial of federal registration, on the basis of the content of the mark, does not prevent use of the mark, but does deprive the owner of some significant benefits. (33)

3. THE FIRST AMENDMENT RULINGS

   1. Prior to Tam

      What, then, was the proper judicial response to a First Amendment challenge to a statutory bar to registration based on the content of a mark? Note, first, that trademarks have been treated as forms of speech, thereby bringing the First Amendment into play. (34) Most marks, by far, would be viewed as exemplars of "commercial speech," (35) which explains why the prevention of use of a mark which is likely to create consumer confusion as to source or sponsorship poses no First Amendment problem; "false or misleading" commercial speech receives no First Amendment protection. (36) But a mark, particularly a service mark, will not necessarily be deemed "commercial." (37) Should a content-based ban on registration of a mark be subjected, then, to the well-established analysis for determining the constitutionality of regulations of commercial speech, (38) or perhaps to strict judicial scrutiny, as content-based regulations of speech otherwise usually are? (39)

      Consider now the meaning of the two provisions at issue in Tam and Brunetti.

      Case law established that the determination of whether a mark was "disparaging" (at least in the context of disparagement of an identified group, (40) as in Tam) was to be determined by looking to the reactions of a substantial composite of the allegedly disparaged group. (41) Were ordinary First Amendment principles to be employed, this provision would surely be stricken as an instance of impermissible viewpoint discrimination. (42)

      As to "scandalous or immoral" marks (the subject of Brunetti), courts often said this: "In order to prove that [a] mark is scandalous, the PTO must demonstrate that the mark is 'shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable...." (43) Alternatively, it was said: "A showing that a mark is vulgar is sufficient to establish that it 'consists of or comprises immoral ... or scandalous matter." (44) Whether "commercial" or not, should the impediment to registering a "vulgar" mark have been stricken pursuant to the courts' longstanding protection of "offensive" speech? (45)

      But recall that even an unregistered mark may be used and may receive protection under the common law. Until Tam, the prevailing judicial view (which I will call the "minimal burden" approach) appeared to be, as one court expressed it, that "the refusal to register a mark does not proscribe any conduct or suppress any form of expression because it does not affect the applicant's right to use the mark in question." (46) Denial of registration was therefore not seen as a burden on speech sufficient to trigger any First Amendment analysis.

   2. Tam

      These bars to registration thus appeared to be constitutionally unproblematic, until Tam's challenge to the "disparagement" clause reached the Court of Appeals for the Federal Circuit. Tam, the lead singer of a band called "The Slants," sought federal registration of "THE SLANTS" as a service mark, but the PTO rejected his application as "disparaging" to Asians. Based on circuit precedent, the Court rejected Tam's First Amendment challenge to the statutory ban on registration of such words, but offered a separate opinion in which Judge Moore called for the Court to revisit that governing precedent. (47) That led to that court's en banc ruling, which did just that, and invalidated the ban on registration of "disparaging" marks. (48) Denial of registration, said Judge Moore, had "a chilling effect on speech." (49) The Supreme Court unanimously affirmed, (50) without even commenting explicitly on the minimal-burden approach that had held sway for so long.

      The ruling was squarely based on the concept of viewpoint discrimination. Writing for the Court, Justice Alito stated that the disparagement provision "offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." (51) But beyond that key assertion (and the Court's rejection of Tam's statutory argument (52) and the PTO's "government speech" argument (53)), unity gave way to two separate opinions, each representing the views of four Justices. (54) The government, of necessity, had argued that the usual rules of First Amendment analysis (identified above) should not be applied in this context. In furtherance of this attempt to escape heightened judicial scrutiny, the government argued that the PTO's registration scheme should be (a) deemed to be "government speech;" (b) analogized to government programs subsidizing speech; or (c) analyzed "under a new doctrine that would...