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

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 principle 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. ! I NTRODUCTION When Simon Shiao Tam set out to register the trademark The Slants for his Asian-American rock band, he had no idea he would 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 that are disparaging, scandalous, or immoral. 4 Notably, the authority to reject a potentially disparaging trademark from being registered—unlike an immoral or scandalous trademark—rests 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 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 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. §§ 1051–1141 (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 trademark 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 ( continued ) 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 when 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 controversial 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 whatever 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 opinion 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 ultimate determination is inherently subjective and the TTAB and 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, 473–78 (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 inclination to avoid language and practices that might offend anyone’s political sensibilities, esp[ecially] in social, racial, or sexual matters.” Political Correctness , BLACK’S LAW DICTIONARY (10th ed. 2014). Likewise, it has also been defined as “[a]n instance in which a person conforms to this inclination; euphemistic language, innocuous 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 America 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 , NAT’L 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 behavior 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 PTO—not 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 Act—for purposes of a trademark’s federal registration—directly 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 First 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 First 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, 352–63 (2003) (excluding 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, 23–24 (1975) (excluding obscenity); New York v. Ferber, 458 U.S. 747, 764–66 (1982) (excluding child pornography); Brandenburg v. Ohio, 395 U.S. 444, 448 (1969) (excluding incitement); N.Y. Times v. Sullivan, 376 U.S. 254, 279–83 (1964) (excluding defamation). Thus, because “disparaging” speech does not fall into one of these well-defined and limited classes of speech, it should receive the full protections of the First Amendment. 164 CAPITAL UNIVERSITY LAW REVIEW [45:161 because trademark law is so nuanced.” 13 For example, this issue comes to light when determining the level of constitutional protection afforded to trademarks. Whereas trademarks have typically been classified as “commercial speech” and are subject to...