Symposium: (Don’t) always look on the bright side
on Dec 21, 2016 at 1:43 pm
Megan Carpenter is a professor of law, and founder and co-director of the Center of Law and Intellectual Property, at Texas A&M University School of Law.
The British comedy troupe Monty Python tells us to “always look on the bright side of life.” Should the same apply to trademark law? That is, should trademark law grant rights to speech that expresses positive viewpoints of individuals or groups, and deny rights to speech that expresses a negative viewpoint? And how, exactly, does one define the bright side? What if bright language has a dark undertone (like the Monty Python song), or if socially critical language is reappropriated in a positive light? Does the law draw parameters in a way that is sufficiently clear? And is any of this really the business of trademark law?
These questions underlie Lee v. Tam. Simon Tam is an activist and founder of the band The Slants, an Asian-American rock band committed to advocacy for, and raising awareness of discrimination against, Asian-Americans. The band’s trademark THE SLANTS was denied registration by the U.S. Patent and Trademark Office on the basis that it disparages people of Asian descent. On January 18, 2017, the Supreme Court will consider whether this bar on registration of disparaging marks is facially unconstitutional.
The disparagement bar is a viewpoint-based determination that is highly subjective and that varies with time, context and tribunal. By creating an ambiguous normative framework with little predictive quality, the bar is also vague and ineffective, which threatens to chill constitutionally protected speech. Trademark law and doctrine are messy, chasing the fickle consumer mind, and there should be some tolerance for error. But we should take pains to ensure that protected expression is not suppressed by the denial of substantive rights based on the expression of a particular viewpoint.
Viewpoint discrimination
There is a reason lawyers across the country routinely encourage their clients to register their trademarks. A registered trademark is a vital part of an effective business strategy, and there are significant, substantive legal benefits to registration. Trademark registration creates nationwide protection, something that can greatly expand a trademark owner’s rights. Registration is also prima facie evidence of the ownership and validity of a mark, and it enables a mark to become “incontestable” after five years’ continuous use. Registration enables a trademark owner to prevent the importation of infringing or counterfeit goods. It also provides constructive notice of a mark’s ownership, benefiting both the trademark owner and the marketplace in general. As a public policy matter, having a robust, comprehensive registration record is important to the functioning of the trademark system overall and furthers marketplace efficiencies. For an entity seeking investment capital, a registration (or application) is often essential.
Trademark law is an instrument of consumer protection. It reduces consumer search costs and provides an incentive for producers to invest in strong source-identifiers that distinguish the quality of goods and services. Trademarks are properly refused registration when they are not squarely related to the core function of a mark, that is, when they risk deceiving consumers or when they inhibit a mark’s source-identification capacity.
Registration may properly be denied when marks contribute to consumer deception and confusion, such as for marks that are deceptive or deceptively misdescriptive. These trademarks misdescribe goods or services in such a way as to affect a significant portion of relevant consumers’ purchasing decisions. Marks that are geographically deceptively misdescriptive are also refused registration; rejection hinges on whether purchasers are likely to believe the goods originate in the geographic location and whether that misrepresentation is a material factor in purchasing. Marks that falsely suggest a connection with a person or institution are rejected when consumers of goods and services would presume such a connection, as are marks that so resemble an existing mark as to create a likelihood of confusion in the marketplace as to source, affiliation, or sponsorship. Bases for rejection often involve a likelihood that misperception by the consumer will confer an unfair advantage on the trademark-holder. For example, marks that consumers would recognize as identifying a particular living individual cannot be registered without the individual’s consent. Also, marks are denied registration when they contain true representations of governmental authority symbols by unaffiliated entities. All these bases for rejection are viewpoint-neutral and seek to protect consumers from deception or confusion of some sort.
Registration may also properly be denied for reasons related to a mark’s inability to serve as a source identifier; marks rejected on this basis include merely descriptive trademarks, marks that are primarily merely a surname, and functional trademarks. Like the grounds for refusal discussed above, this category is content-based but viewpoint-neutral. A proper evaluation of whether a trademark is descriptive of particular goods or services, for example, necessarily requires consideration of the content of the mark, because the degree of distinctiveness can only be determined with reference to the specific goods or services. Refusal of registration for marks that are primarily merely a surname relies on a similar rationale. Marks will also be refused registration where they are functional — if a product feature is essential to the use or purpose of the article or if it affects the cost or quality of the article, it cannot serve as a source-identifier.
In stark contrast to these other registration bars, the Lanham Act also denies registration to marks that are disparaging and to those that are scandalous/immoral. These bars are unrelated to the core function of trademarks. (I have written previously on the registration bar for scandalous and immoral marks here and here. My comments here will focus on the disparagement bar.)
Although much of trademark law is necessarily content-based, the disparagement bar in Section 2(a) of the Lanham Act is different because it discriminates based on viewpoint. Restrictions are content-based when they require consideration of what a statement communicates. When government benefits have been conditioned on content-based criteria, viewpoint neutrality has been required.
New York Times v. Sullivan reminds us of our “profound national commitment that debate on public issues should be uninhibited, robust, and wide-open,” even when it is “vehement, caustic, and sometimes unpleasantly sharp.” Viewpoint discrimination is an egregious form of content discrimination because it restricts speech based not on its content, but on the particular ideas it expresses. As the court stated in 1995, in Rosenberger v. Rector and Visitors of the University of Virginia, the “government must abstain from regulating speech when the specific motivating ideology … is the rationale for the restriction.”
Restrictions on otherwise protected speech must be viewpoint-neutral, yet the very object and purpose of the disparagement bar is to prevent registration of marks that express a negative view of an individual or group. Unlike the other registration bars discussed above, the prohibition on disparaging marks judges speech because of the ideas expressed in that speech (whether or not the speaker intends to express those ideas). It denies substantial government benefits based on whether the ideas expressed in that speech are favorable or unfavorable. Granting of trademark registration under the disparagement provision depends not on the topic addressed, but on the particular viewpoint conveyed by the words of the mark. If a mark refers to a group in a positive way, the mark is granted registration. If it refers to a group in a negative way, registration is refused. As trademarks are a mixture of commercial and expressive speech, the disparagement bar restricts both aspects.
The unconstitutional conditions doctrine tells us that the government cannot condition a person’s receipt of governmental benefits on waiver of a constitutionally protected right. A trademark is one of the most important assets a business enjoys. And registering that trademark with the PTO provides the trademark owner with important, substantive government benefits that are unavailable to unregistered marks. Although it is true that the PTO’s refusal to register a mark is not denial of speech in the most literal sense, it is also true that refusal of registration denies significant government benefits to a trademark owner. The disparagement bar effectively denies those benefits to speech that expresses a negative view of a particular group.
Vagueness
The disparagement bar is also unconstitutionally vague because it is impossible for a reasonable person to determine what marks would or would not be permissible.
As I have discussed previously, decisions by the PTO and courts regarding what is and what is not disparaging are often arbitrary and inconsistent. The disparagement bar creates an unworkable standard that is unclear and unevenly applied, both at the examination and the appellate levels. At the registration level, trademark examiners are forced to make decisions based on inadequate evidence: It is one thing for an examiner to determine channels of trade for goods listed in a trademark application, and quite another for the examiner to assess whether a substantial composite of a referenced group may find a trademark disparaging. In addition, the standard is overbroad and fails to take into account contextually relevant information, including successful reappropriation of words and phrases by a subset of a disadvantaged group within a particular channel of trade. The bar treats a referenced group as homogenous, and fails to effectively distinguish among relevant and diverse perspectives (and marketplaces) within those groups.
In context, it may be that the use of a mark like THE SLANTS by an Asian-American rock band committed to advocacy for, and awareness of discrimination against, Asian-Americans is not disparaging at all. What appears to be a negative label may in fact represent the brightest side of life, one committed to vibrant discourse in the interest of social justice and civil rights.
The Supreme Court can, and should, invalidate the disparagement bar while leaving the overall registration system in the Lanham Act intact.
