US Ponders New Trademark Rights For Racial Slurs

Some words are too offensive to be registered trademarks. Racial slurs, derogatory names for ethnic groups, and other terms that disparage people can be denied registration, according to the vast majority of countries. The US, however, might soon back away from this anti-bigotry stance. The nation’s courts may be on the verge of ruling that the registration of derogatory terms is protected by the Constitution’s guarantee of free speech.

There is no international protection of derogatory trademarks. Article 6quinquies (B)(iii) of the Paris Convention for the Protection of Industrial Property states that marks may be denied registration and invalidated if they “are contrary to morality or public order.” Marks that disparage other people have been ruled as contrary to morality or public order in England, Australia, and many other countries. The General Court of the European Union, for instance, denied registration for “Paki Logistics,” because it contained a derogatory term for individuals of Pakistani heritage.

In the United States, the US Patent and Trademark Office (USPTO) has long had the right to deny trademark registration to derogatory terms. Section 2(a) of the Lanham Act (the nation’s trademark statute) provides that the USPTO may refuse to register a mark that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

This statutory authority does not conflict with the Constitution’s protection of free speech, according to a seminal 1981 ruling, In re McGinley. The decision noted that denying federal trademark registration prevents a word from receiving some rights granted to federally registered marks, but the denial of federal registration does not prevent use of the word – even its use as a trademark under federal or state law. “No conduct is proscribed, and no tangible form of expression is suppressed,” the decision stated. Thus, the decision held, the denial of federal registration does not impair the free speech rights granted by the First Amendment to the US Constitution.

The McGinley decision, issued by the predecessor to the Federal Circuit Court of Appeals, has become established precedent. It was followed in at least four Federal Circuit cases, most recently in an April 20 decision, In re Tam [pdf].

The Slants

The Tam case began when an Asian-American rock band, The Slants, sought federal trademark registration for the band’s name. The USPTO rejected the application because the mark was an ethnic slur that disparaged Asians. The band appealed, but a three-judge panel of the Federal Circuit unanimously upheld the USPTO’s decision. The court easily batted away the First Amendment challenge to USPTO’s action, citing McGinley as binding precedent.

But in “additional comments” appended to the decision, the author of Tam castigated her own decision. Judge Kimberly A. Moore essentially called for McGinley to be overturned because it conflicted with post-1981 court rulings that have expanded First Amendment rights. Under current First Amendment doctrine, she wrote, Section 2(a)’s bar on disparaging marks is unconstitutional.

These additional comments apparently struck home. One week after the Tam decision was issued, the Federal Circuit, on its own motion [pdf], vacated its ruling in Tam and ordered the parties to file new briefs on one issue: “Does the bar on registration of disparaging marks … violate the First Amendment?”

The Federal Circuit isn’t the only court reviewing this constitutional issue. A federal district court in Virginia is looking at whether the USPTO violated the First Amendment rights of a football team when the agency struck down the team’s federal trademark registration for “Redskins.” This derogatory name for Native Americans violated Section 2(a)’s bar on disparaging marks, the USPTO held.

Unconstitutional Conditions

Scholars disagree over whether the bar on disparaging marks comports with modern First Amendment jurisprudence. Those who believe the bar unconstitutional often point to the “unconstitutional conditions” doctrine. This doctrine, as enunciated by the Supreme Court in a 1972 ruling, Perry v. Sindermann, holds it is unconstitutional for the government to condition someone’s access to a benefit based on how that person exercises his free speech rights. It would seem, therefore, that if the USPTO refuses to register a mark because it disapproves of its content – because, say, the mark is disparaging – the agency’s action violates the First Amendment.

The legal situation, however, is more complex. Over time, the courts have interpreted the unconstitutional conditions doctrine in a variety of ways. According to the analysis in Judge Moore’s “additional comments,” the doctrine now only partially limits conditions on taxpayer-funded benefits; it applies fully to just government regulatory schemes that restrict free speech.

Other legal experts say the doctrine has become incoherent. “The unconstitutional condition cases are kind of a mess. There is no agreement on what government can do,” said Prof. Rebecca Tushnet of Georgetown Law School. The Section 2(a) bar on disparaging marks may be constitutional, she asserts, adding that “it is hard to tell how any given judge will analyze this.”

Endorsing Bigotry

Even if the courts hold that Section 2(a)’s bar on disparaging marks conditions a government benefit in a way that impairs an applicant’s free speech, that impairment might still be constitutional. If the government has a “substantial interest” in forbidding the registration of disparaging marks and the bar on registration directly advances this interest in a reasonable way, this will be an allowable restriction on commercial speech, per the Supreme Court’s 1980 ruling in Central Hudson Gas & Elec. Corp. v. Public Service Comm’n.

There is an important reason for barring the registration of disparaging marks, according to some experts. The government doesn’t want to be seen as in any way approving bigotry. “There is a symbolism in allowing registration of a mark. If someone wants to use the trademark ‘White Power,’ well, that’s their decision. But the government should be allowed to say we won’t endorse that,” said Tushnet.

“It would be a great loss if [the Section 2(a) bar] proves unconstitutional and the government will have to endorse all racist speech. The government would be endorsing speech which represents illiberal values and which excludes people from the marketplace,” said Prof. Christine Haight Farley of American University’s Law School.

Other experts reply that registering a mark is not tantamount to government endorsement. The public realizes that it is the mark’s owner that is responsible for the mark, not the government. Trademark registration is thus a program that makes government benefits available to a wide range of speakers. Such a program “is usually considered a limited-purpose public forum, which has to be viewpoint neutral,” said Prof. Eugene Volokh of UCLA Law School. It would thus be unconstitutional for the government to discriminate against marks it disliked, such as disparaging marks.

The Purpose of Trademarks

With all the complexities of First Amendment analysis, it is easy to overlook a key fact about trademarks. They were created to facilitate commerce, not to be a means of expression. Their purpose is to allow consumers to know the source of goods and services, enabling consumers to provide repeat business to reliable providers.

“Trademarks are not granted because people are creative or expressive. They are granted to distinguish one’s goods or services [from competitors’ goods/services],” said Farley.

Given this purpose, should free speech rights even be applied to trademarks? The answer is “yes,” according to many experts, who note that marks can have artistic, social, and political meanings. “Consider the mark ‘Stop the Islamization of America.’ That is political speech, but the USPTO denied registration of that mark because it was disparaging,” said Volokh.

Yet insofar as marks do have artistic, social and political meanings, those meanings are separate from the mark’s value as a source-identifier. The motive for these non-commercial meanings is satisfied once the mark has been spread among the public, regardless of whether the public provides repeat business to the mark’s owner.

If that is correct, free speech concerns would be satisfied when a mark is used in commerce. Registration of a mark would do nothing to further free speech concerns. Registration would affect only the mark’s strength as a source-identifier, increasing its power to exclude others from using the mark.

Note that instead of promoting free speech, a trademark restricts it. It is a limited, government-sanctioned monopoly that prevents others from using that mark (or a too-similar mark) on their goods/services. Federal registration of a mark strengthens this monopoly, making it harder for others to make use of the words and images in the mark. So if the US courts find that applicants have a free speech right to register disparaging marks, that ironically, will restrict the free speech of others.

Under these circumstances, why couldn’t the government refuse to register source-identifiers that promote bigotry? The government’s action would not seem to impair free speech, since the disparaging mark could still be distributed in public. …Perhaps McGinley got it right after all.

The US courts, however, may come to a different conclusion. Since the Federal Circuit is reviewing this issue en banc, the judges must think there is a powerful argument for overturning McGinley. Experts are divided on what the court will do, but there is a fair chance that, unlike most other nations, the US may soon allow the registration of disparaging and bigoted marks.