The Mascot Manifesto: Challenging the Constitutionality of Section 2(A) of The Lanham Act in a Heightened Era of Political Correctness

Author:Zachary S. O'Driscoll
Position:J.D. candidate, May 2017, Capital University Law School; Bachelor of Science in Criminal Justice, cum laude, 2014, Heidelberg University. I am very grateful and deeply indebted to Professor Susan Looper-Friedman of Capital University Law School, Articles Editor Alexis Preskar, my fiancée Carri Melcher, and my mother Janet O'Driscoll whose...
Pages:161-197
SUMMARY

Section 2(a) of the Lanham Act directly conflicts with the general free speech principles protected under the First Amendment; only a few circuit courts have discerned this confliction. Because of this confliction, the Supreme Court of the United States should find Section 2(a) of the Lanham Act unconstitutional as it violates the First Amendment.

 
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THE MASCOT MANIFESTO: CHALLENGING THE
CONSTITUTIONALITY OF SECTION 2(A) OF THE
LANHAM ACT IN A HEIGHTENED ERA OF POLITICAL
CORRECTNESS
ZACHARY S. O’DRISCOLL*
If there is a bedrock prin ciple underlying the First Amendment, it is
that the government may not prohibit the expression of an idea simply
because society finds the idea itself offensive or disagreeable.”1
I.!INTRODUCTION
When Simon Shiao Tam set out to register the trademark The Slants
for his Asian-American rock band, he had no idea he w ould be uprooting
the laws of intellectual property and its relationship with the First
Amendment.2
Since the inception of the Lanham Act,3 a federal trademark statute,
applicants have been denied from federally registering trademarks tha t are
disparaging, scandalous, or immoral.4 Notably, the authority to reject a
potentially disparaging trademark from being registeredunlike an
immoral or scandalous trademarkrests on the subjective opinion of a
single examining attorney at the United States Patent and Trademark
Office (PTO).5 A trademark identified as “disparaging” by one examining
Copyright © 2016, Zachary S. O’Driscoll.
* J.D. candidate, May 2017, Capital University Law School; Bachelor of Science in
Criminal Justice, cum laude, 2014, Heidelberg University. I am very gratefu l and deeply
indebted to Professor Susan Looper-Friedman of Capital University Law School, Articles
Editor Alexis Preskar, my fiancée Carri Melcher, and my mother Janet O’Driscoll whose
advice, guidance, patience, and support made this work possible.
1 Texas v. Johnson, 491 U.S. 397, 414 (1989).
2 See generally In re Tam, 808 F.3d 1321 (Fed. Cir. 2015).
3 15 U.S.C. §§ 10511141 (2012).
4 Both the prohibitions on “scandalous” and “immoral” trademarks first appeared in the
Act of 1905. Act of Feb. 20, 1905, ch. 592, § 5(a), 33 Stat. 724, 725. The “disparagement”
provision, on the other hand, originated in the Lanham Act of 1946. The Lanham
(Trademark) Act of 1946, Pub. L. No. 78-489, §2, 60 Stat. 427, 428 (codified at 15 U.S.C. §
1052(a) (2012)).
5 Tam, 808 F.3d at 1331 (“A single examiner, with no input from her supervisor, can
reject a [trade]mark as disparaging by determining that it would be disparaging to a
substantial composite of the referenced group.”). On the other hand, a tradem ark that may
be “scandalous” or “immoral” requires an examining attorney at the PTO to consult a
supervisor. Compare Trademark Manual of Examining Procedure (TMEP) § 1203.03 (Oct.
2016) (no mention whatsoever of an examining attorney consulting a supervisor for a
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162 CAPITAL UNIVERSITY LAW REVIEW [45:161
attorney, and thus, rejected for registration, may not be considered
disparaging by another.6 This result has muddled the PTO with regular
inconsistencies whe n approving an application, and thus, has left the
federal trademark registration program packed with imperfection.7
To make matters worse for the PTO, the perception of what may be
disparaging is ever changing with society’s growing apprehension to be
politically correct in every possible instance.8 While it is undisputed that
the original intent of political correctness may have been kind and
compassionate speech, it has become an increasingly contro versial topic
because, the truth is, societal attitudes are always subject to change.9
trademark that may be disparaging), with TMEP § 1203.01 (Oct. 2016) (“To ensure
consistency in examination with respect to immoral or scandalous matter, when an
examining attorney believes, for w hatever reason, that a mark may be considered to
comprise such matter, the examining attorney must consult with his or her supervisor.”).
6 See Tam, 808 F.3d at 1342 n.6. The use of the word disparage “is going to cause a
great deal of difficulty in the Patent Office . . . . [I]t is always going to be just a matter of
the personal opinio n of the [examining attorneys] as to whether they think it is
disparaging.” Hearings on H.R. 4744 Before the Subcomm. on Trade-Marks of the H.
Comm. on Patents, 76th Cong. 21 (1939) (statement of Leslie Frazer, Assistant Comm’r of
Patents). See also Gabe Rottman, Redskins Wrong, But Legal, ACLU (Dec. 10, 2013, 10:41
AM), https://www.aclu.org/blog/redskins-wrong-legal [https://perma.cc/2B8N-44UX] (“At
the end of the day . . . the ultim ate determination is inherently subjective and the TTAB a nd
reviewing courts have a significant amount of discretion in deciding what’s disparaging and
what’s not.”).
7 See, e.g., Megan M. Carpenter & Kathryn T. Murphy, Calling Bulls**t on the Lanham
Act: The 2(a) Bar for Immoral, Scandalous, and Disparaging Marks, 49 U. LOUISVILLE L.
REV. 465, 47378 (2010) (discussing inconsistent examining-attorney decisions in applying
Section 2(a) to trademarks).
8 “Political correctness” is popularly defined two ways. First, it is “[t]he inclin ation to
avoid language and practices that might offend anyone’s political sensibilities, esp[ecially]
in social, racial, or sexual matters.” Political Correctness, BLACKS LAW DICTIONARY (10th
ed. 2014). Likewise, it has also been defined as “[a]n instance in which a person conforms
to this inclina tion; euphemistic language, innocuou s behavior, and nonjudgmental attitudes
that are self-consciously adopted so as not to offend or insult anyone.” Id. For specific
instances of the political correctness controversy, see Cailey Gleeson et al., Is Am erica
Becoming Too Politically Correct?, HUFFINGTON POST (Mar. 4, 2016, 5:10 PM),
http://www.huffingtonpost.com/the-mash/is-america-becoming-too-p_b_9387060.html
[https://perma.cc/V8RF-9YSW]; Gary Shapiro, Political Correctness Is Hurting America,
TOWNHALL (Feb. 16, 2012, 1:15 PM), http://townhall.com/columnists/garyshapiro/2012/
02/16/political_correctness_is_hurting_america/page/full [https://perma.cc/ZH9C-BYK3];
Michael Snyder, 20 Outrageous Examples that Show how Political Correctness Is Taking
over America, TRUTH (Dec. 13, 2012), http://thetruthwins.com/archives/20-outrageous-
examples-that-show-how-political-correctness-is-taking-over-america
[https://perma.cc/4HJR-3JFU].
9 See Ben Carson, The Redskins Name Game, NATL REV. (June 25, 2014),
http://www.nationalreview.com/node/396897/print [https://perma.cc/4M3T-Q344]; SANDRA
E. LAMB, WRITING WELL FOR BUSINESS SUCCESS 127 (2014) (The notion of political
(continued)
2017] THE MASCOT MANIFESTO 163
Today, Americans continue to misconstrue their constitutional liberties
with a “right” to never be offended and, consequently, every word,
thought, phrase, or behav ior has to be scrutinized with a fine-toothed
comb.10 This is especially true for trademark owners as they are left
attempting to solve an impossible conundrum in order to register their
trademark with the PTOnot offending somebody, somehow, somewhere.
Nevertheless, the issues surrounding what is deemed “disparaging” by
an examining attorney at the PTO is not the central focus of this Note.
Rather, this Note details, in part, why the Lanham Actfor purposes of a
trademark’s federal registrationdirectly competes for priority with the
fundamental freedom of speech protected under the First Amendment.11
The First Amendment unequivocally protects the freedom of speech from
being infringed upon by federal legislation.12 Yet, there is nothing
simplistic about applying trademark law as it pertains to the F irst
Amendment. As appropriately explained by Professor Ned Snow from the
University of South Carolina School of Law, “Analyzing the Lanham
Act’s anti-disparagement provision under the F irst Amendment raises
particularly difficult questions, both because speech law is so complex and
correctness declares certain topics, certain expressions, even certain gestures, off-limits.
What began as a crusade for civility has soured into a cause of conflict and even
censorship.”) (discussing George H. W. Bush’s commencement speech at the University of
Michigan in May 1991).
10 See Carson, supra note 9; BJ Gallagher, The Problem with Political Correctness,
HUFFINGTON POST (Apr. 27, 2013), http://www.huffingtonpost.com/bj-gallagher/the-
problem-political-correctness_b_2746663.html [https://perma.cc/3N34-N95L].
11 See infra Parts III, IV.
12 JEROME A. BARRON ET AL., CONSTITUTIONAL LAW: PRINCIPALS AND POLICY CASES
AND MATERIALS 985 (2012). The First Amendment of the United States Constitution
provides: “Congress shall make no law respecting an establishment of religion, or
prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or
the right of the people peaceably to assemble, and to petition the Government for a redress
of grievances.U.S. CONST. amend. I. It is important to note, however, that the First
Amendment has historically recognized several well-defined and limited classes of speech
where the constitutional freedoms have been restricted. For example, the classes of speech
that traditionally have been excluded from First Amendment protections include: true
threats, fighting words, obscenity, child pornography, incitement, and defamation. See
Virginia. v. Black, 538 U.S. 343, 35263 (2003) (exclud ing true threats from First
Amendment protections); Chaplinsky v. New Hampshire, 315 U.S. 568, 574 (1942)
(excluding fighting words); Miller v. California, 413 U.S. 15, 2324 (1975) (excluding
obscenity); New York v. Ferber, 458 U.S. 747, 76466 (1982) (excluding child
pornography); Brandenburg v. Ohio, 395 U.S. 444, 448 (1969) (excluding incitement); N.Y.
Times v. Sullivan, 376 U.S. 254, 27983 (1964) (excluding defamation). Thus, because
“disparaging” speech does not fall into one o f these well-defined and limited classes of
speech, it should receive the full protections of the First Amendment.

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