“By mandating positivity, the law here might silence dissent and distort the marketplace of ideas.”
— Justice Anthony Kennedy
“If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently.”
— Justice Samuel Alito
We’ve all seen the symbols typed next to the names of products, companies and services. Sometimes it’s a capital “TM” and other times the ®. Both of those symbols indicate that the business using the word believes that the word represents them or their product in such a way that other companies should not be able to use the same word or words. I couldn’t start a computer company and call it “Apple.” You couldn’t start a shoe company and call it “Nike.” (Trademark law gets really fun when I have a computer company named “Lexis” and you have a car named “Lexus,” but that’s another issue for another day.)
Like copyright protection, trademark protection is inherent in your regular course of business. If you choose to do nothing else to protect your trademark, then you denote it using the “TM” to show that you believe that you have a valid trademark claim. You can also register your mark with the U.S. Patent and Trademark Office. To do so, the office needs to be convinced that you are actually using the mark in business and that the mark is unique, at least within your field. If your trademark is registered, then you get to use the circled R to note that registration.
Until Monday of this week, you needed to demonstrate one other thing to earn federal registration of your mark. You needed to demonstrate that your mark did not “disparage” any person or group. In essence, you had to show that your mark was not offensive, or else the government wouldn’t protect it. As with most situations dealing with offensive speech, different people had different views about what was offensive.
So it was that musician Simon Tam came to sue the Patent & Trademark Office for denying his patent application. Tam, who is of Asian descent, is the lead singer of a rock band called “The Slants.” All members of the band are Asian-Americans. They readily admit that “slants” has been a slang and derogatory term for Asian-Americans, but claim that their use of it is an attempt to neutralize the word and “reclaim” it. The Trademark Office didn’t agree. It thought the term was derogatory and denied the application. Tam thought the ruling infringed on his free speech rights and sued.
I have noted before in this space that this has been a remarkable year for consensus among the Supreme Court Justices. This was a case that I thought might deeply divide them, but I was very wrong about that. Although they split on some of the logic behind their decision, all eight Justices (Justice Gorsuch had not yet been appointed when the case was heard) concluded that the requirement that the trademark not “disparage” — that it not be offensive — was an unconstitutional restriction of free speech.
The government is allowed to censor its own speech, so the first question they had to answer was whether federal registration somehow transforms the trademarks into government speech. Justice Alito disposed of that argument pretty quickly. Is the government telling us to “Just Do It,” he asked? Are the feds telling us to “Have It Your Way”? When they registered the trademark for “EndTime Ministries” were they secretly warning us of an impending Armageddon? Obviously not. And that’s because those registered trademarks are not government speech — they are the individual speech of the companies that registered them.
If the speech is individual speech, can the government censor it? Both Justice Alito and Justice Kennedy, who wrote a separate concurrence, answered that question with a resounding no. As Justice Kennedy put it, “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”
The decision means that “The Slants” will get their trademark registration, but it has far more wide-ranging application. Two years ago the trademark protection of the Washington Redskins name was cancelled on the same basis, and the Supreme Court refused to take that case. This decision nullifies that prior ruling. It is fascinating to see that the Supreme Court passed on that case, which they would have known would be high profile and controversial, but then found a case just a year later with which they could consider the identical issue.
The High Court’s few remaining decisions will likely all come in the next week.
David Hejmanowski is Judge of the Probate/Juvenile Division of the Delaware County Delaware County Court of Common Pleas.