Free Speech: Prohibition on Registering Disparaging Marks is Unconstitutional, Federal Circuit Rules

By Dennis Crouch

In re Tam (Federal Circuit 2015) (en banc)

Big trademark case from the Federal Circuit. Judge Kimberly Moore filed the majority opinion holding that the statutory prohibition against registration of “disparaging marks” is an unconstitutional governmental regulation of speech. This issue has been coming to a head for many years, and this decision will likely impact the parallel Washington Redskins dispute. There would be a good chance for Supreme Court review of the case if the government presses its position. However, it is not clear to me that the government will do so.

The majority writes:

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.

Nine members of the court signed the majority opinion filed by Judge Moore. In addition to signing the majority opinion Judge O’Malley filed a concurring opinion (joined by Judge Wallach). Judges Dyke, Lourie, and Reyna each field dissenting opinions.

Judge O’Malley’s concurrence argues that, in addition to serving as an unconstitutional speech limitation, section 2A is also “unconstitutionally vague, rendering it unconstitutional under the Fifth Amendment of the United States Constitution.”

Judge Dyk’s partial dissent argues that the statute itself is not “facially unconstitutional”, but has been applied in an unconstitutional manner in this particular case. Judge Dyk’s approach would leave intact the prohibition on registering marks that “disparage . . . or bring into contempt, or disrepute,” but would block the government from refusing registration based upon whether or not the government disagrees with a mark’s message.

Judge Lourie’s dissent first questions “why a statute that dates back nearly seventy years—one that has been continuously applied—is suddenly unconstitutional as violating the First Amendment. Is there no such thing as settled law, normally referred to as stare decisis?” On the merits, he argues that denial of a registration does not impact the freedom of speech. Rather, Mr. Tam can continue to use his “slants” mark even without registration. “The argument, therefore, that a trademark applicant’s right of free speech has been impaired by the failure of the USPTO to grant a federal registration is unconvincing.” Judge Lourie also questions whether a mark’s protection should count as even commercial speech.

Finally, Judge Reyna argues in dissent that “the refusal to register disparaging marks under § 2(a) of the Lanham Act is an appropriate regulation that directly advances the government’s substantial interest in the orderly flow of commerce.” As such, he argues, regulation satisfies the intermediate standard of scrutiny should be applied in the commercial speech category.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

111 thoughts on “Free Speech: Prohibition on Registering Disparaging Marks is Unconstitutional, Federal Circuit Rules

  1. If it’s your client’s free speech right to enforce an ethnic slur as a trademark, it might be your duty when representing that client in court to strike jurors based on their ethnicity, to protect your client’s right to a fair trial. Whether you agree or disagree with that, plenty of plaintiff’s attorneys will. Maybe this is enough of a government interest to justify prohibiting registration. It still leaves open the possibility of plaintiff’s attorneys seeking segregated juries when enforcing unregistered marks.

    1. The one has nothing to do with the other.

      You never studied the First Amendment, did you DC?

      (and heaven forbid we ever defend actual criminals or prosecute actual innocent people…)

      1. Darn, you got me. All I know of the First Amendment I learned from School House Rock. Now that I have read it, I am shocked that it makes no mention of racial discrimination in jury selection. And it is so cryptic: How does the Supreme Court come up with all those rules abridging freedom of speech when the First Amendment is totally unambiguous (“No law” does not on its face mean “only some laws” but that is how the First Amendment is applied. It’s like the pigs slyly edited the writing on the barn wall.).
        But seriously, you are correct in the sense that the connection between free speech and racial discrimination in jury selection is quite attenuated. They have nothing to do with each other in the same sense that Reyna’s harm to commerce has nothing to do with the first amendment. But under the Central Hudson test discussed by Moore and applied by Reyna, any government interest might be enough to justify a limitation on commercial speech, with or without connection to the First Amendment. Creating a situation in which plaintiffs will have good reason to keep hāʻole’s, whitey’s, micks, dagos and krauts off the jury may be a more significant than the several vague reasons asserted by the government and knocked down by Moore. It would be worse if considered in the context of ethnic slurs for blacks, latinos and asians. At the very least, racial discrimination in jury selection implicates some of those other amendments that I have “never” studied, whereas all the issues addressed in the opinions do not.

          1. You are correct at 12.2: Reyna identifies no particular harm to commerce; he just says there is some. My point was that the harm Reyna identified has no connection to the First Amendment, and none of the harms identified by anyone in the case has any connection to the First Amendment.

            1. You are correct at 12.2: Reyna identifies no particular harm to commerce; he just says there is some.

              Thanks DC for the acknowledgement, and not to show disdain, but I just am not seeing the point that you are trying to make.

              My point was that the harm Reyna identified has no connection to the First Amendment, and none of the harms identified by anyone in the case has any connection to the First Amendment.

              First, there is NO harm “identified” by Reyna. You acknowledge this, but then turn around and act as if something has actually been identified. You cannot use a phantom thing to make your point.

              Now if you instead mean that the “supposed” harm is of a certain thing, and then want to see if there is (or is not) a connection between this supposed harm and the first amendment we can proceed.

              But there, I fully disagree with your “point” that this supposed harm has nothing to do with the First Amendment because that supposed harm has everything to do with the First Amendment. This is the “politically correct” nature of that supposed harm and the overweening nannyism from those seeking – albeit with possibly the purest of intentions – to snuff out that supposed harm. One problem stands in the way of those seeking to impose their feelings: the First Amendment.

              In a fundamental manner, we have before us a very Voltaire type of “supposed harm.”

              There have been posts here attempting to separate business action from business speech (which of necessity, fails for where there is no remedy for a given right, there is no right indeed, and thus the nature of our court system cannot separate the remedy from the right).

              The underlying point – the critical point – remains that of one of selective government action based on the related expressive content.

              When one recognizes that even commercial speech has First Amendment protections, and the majority here do recognize this and state that ANY and ALL levels of First Amendment scrutiny are NOT met here, then one must recognize – even in the face of the supposed harm – and ESPECIALLY given our Voltaire type of “may not like what you say, but will die to give you the right to say it” protection AGAINST State Nannyism of this “politically correct” attempt to control the particularly selected expressive content, that any “feelings” cannot be allowed to overcome the rights to BE offensive.

              No one has a right to NOT be offended. If you are offended, you (personally) still have the power of your own pocketbook. There very much is a real issue with some wanting to take that personal power away and allow governmental control and elimination of a (already created) right based on subjective preference regarding expressive content.

              Clearly, even if for argument’s sake such things such as the NFL team Redskins were offensive (and I expressly do not accept that term as offensive – for reasons already posted), it is NOT within our government structure (directly from the protections afforded by the First Amendment) to allow selective enforcement based on expressive content. The underlying Voltaire rationale simply cannot give way to the “feelings” movement. The “politically correct” must not be allowed to have that means to what ultimately may be a noble ends. AGAIN – in law – the ends do not justify the means.

              1. Actually, my only minor point at 16.1.1.1.1 was that the “harm” of racial discrimination in jury selection which will be attendant to enforcement of ethnic slur trademarks is no more or less detached from the first amendment than any harm identified anywhere in the opinions. Nobody identified a harm with any direct connection to the First Amendment, and that is not required by Central Hudson.
                My bigger point was that the government’s interest in avoiding racial discrimination in jury selection attendant to enforcement of ethnic slur trademarks could be a sufficient government interest to satisfy the Central Hudson test. Or, it could be something we just have to deal, and let attorney’s exclude ethnic jurors from juries, and let ethnic jurors know that they are not welcome in the judicial system for yet another reason.
                I still see no connection between any of the harms identified and the first amendment in any Central Hudson case. Most interesting is Coors Brewing, in which the Supreme Court thought a limit on beer advertising could be justified to avoid the harm of encouraging more potent beer. (How that makes sense in a world where whisky exists, I’ll never understand.) There is no way that more potent beer has any connection to the first amendment. (Coors Beer struck down the regulations at issue because they were broader than necessary.) But is is a good example that, under Central Hudson, the “substantial interest” supporting a limit on commercial speech need not have any connection to the first amendment.

                1. Thanks DC,

                  I realize that your aim is “other cases,” but I still think that your view is off for a couple of reasons.

                  First and foremost, you incorrectly presume “racial discrimination in jury selection which will be attendant to enforcement of ethnic slur trademarks” when NO such basis for this conclusion exists. IN fact, you presume the very worst: that people must be biased based on race, and that therefore there will be this “attendant” thing that is every bit as “phantom” as the “economic harm.”

                  Secondly, whether or not you see a connection is based in part on what you are trying to see the connection between. That’s why I stated that one would need to (correctly) view this as a supposed harm – wherein that supposed harm is what those who are “politically correct” are trying to push: “forced” harmony at the very cost of that which the First Amendment protects.

                  Lastly, no matter which level of scrutiny, the case here would have come out the same (and the court expressly states that).

                2. You are highlighting deficiencies in Central Hudson.
                  Central Hudson does not require any evidence that the “substantial interest” actual exists. If a judge can envision a harm, with no need to establish any basis in fact, that’s enough for Central Hudson. It may be better to require some sort of evidentiary proof that the harm purportedly avoided would actually come to pass, and that it would be harmful (that would be a good idea in most rational basis issues as well, to avoid laws supported by clearly bogus rationales). But as it stands, any bogey man suffices.

                  As to my incorrect presumption: If I am a judge applying Central Hudson, I don’t need to presume anything, I just need to make something up, or accept something that the government makes up. What I propose, though, seems much more rooted in the real world than anything identified in the opinion. It would more than just another form of offense. I think we have a substantial interest in avoiding situations which would encourage racial discrimination in jury selection.
                  And I think that the burden is not so substantial: If the excuse for adopting an ethnic slur is expression, than the defense against infringement is expression.

  2. SD: Slashdot: The FCC prevents the seven dirty words from appearing on the public broadcast channels, presumably to prevent a tragedy of the commons and a race to the bottom.

    Who decides what kind of speech constitutes “a tragedy”? Who decides what kind of speech constitutes “the bottom”? Surely it’s not “the government”! After all, the government “can’t be trusted” to make those kind of calls. Everybody knows that.

    Perhaps you can explain the key distinction between the term “sh-t” (on one hand) and the terms “g00k” or “nxgger” that makes the use of the latter terms so dear and crucial to our trademark regime and the former term so plainly worthy of censorship.

    That is a far cry from here where the government was picking and choosing amongst different (offensive) political expressions.

    There’s no evidence that the government was favoring any particular views. Were there mistakes made? Sure. That’s going to happen when we’re talking about hundreds of thousands of trademarks being applied for annually.

    you could register the most horrifying and offensive phrases imaginable as long as you combined them with the words ‘patent attorney’.

    In fact that’s not true. The USPTO would not have registered the mark “Patent Attorneys Are The Biggest Sh-ts in the Legal Txxlet” (among many others). And do you know what? I’m pretty sure the USPTO still won’t register that mark because the proscription against “immoral” marks and “scandalous” marks still stands. I’m curious as to whether people believe that the PTO will ever be required — constitutionally — to register a mark which includes the term “f k” or “c t”.

    That reminds me: for a while in the US there was deemed to be a proscription (under 101) against patenting inventions with “immoral” utility (e.g., devices for deceiving people). That proscription was terminated by the CAFC in Juicy Whip (1999). Who was the author? Interestingly enough, it was Judge Lourie, one of the dissenters here.

    1. I really don’t get people that support the Redskin mark regardless of the law. It is obvious that the Native Americans find it deeply offensive (at least some), so why not be the bigger person and agree to stop using it? You know, what happened to the Native Americans and the Africans is certainly worse than the holocaust–much worse. Can’t you have some respect for that and no matter the law drop the name Redskins?

      1. People do – and lots of them.

        The use – here – is simply NOT as offensive as the “politically correct” would spin it.

        As I said, teams want fans to cheer FOR the the team, and in this instance, we have the situation of a term changing its connotation to a positive term.

        In case no one told you, language can indeed change.

        And that’s not even addressing the “nanny” factor.

        1. anon, the question should be how the Native Americans perceive the term Redskins not how fans of the football team perceive the term.

          1. Why?

            (and please note that I am NOT asking as to the Nanny state – now deemed unconstitutional – “affected party” idea)

            The ridiculousness of such is exemplified by post 2.1.3.1 below.

            1. anon, I get the legal point. It goes into the great bucket of the more layers of government and regulations we have the more the government tries to take away our rights.

              But, my point is that even if the Redskins mark remains, shouldn’t you want to change the name just out of courtesy to the Native Americans? Don’t they deserve some deference?

    2. “There’s no evidence that the government was favoring any particular views. Were there mistakes made? Sure. That’s going to happen when we’re talking about hundreds of thousands of trademarks being applied for annually.”

      So, what’s OK for trademarks is horrible for patents? That is, if some “mistakes” happen in trademarks and some get through when they shouldn’t have, what’s wrong with a few patents getting through when they shouldn’t have? You seem to be obsessed with the latter but apparently don’t care about the former. Why?

      1. PB: a few patents getting through

        A “few”? For the past decade or two there’s been more junk patents granted than there were requests for trademark registration.

    1. Hey NW,

      Yes, the USPTO’s electronic systems, including EFS, had a “meltdown” last night: link to uspto.gov . I can just hear the “firestorm” building as all those folks trying to make last minute (and many) filings are told they have to use the old Express Mail procedure as the only Plan B.

      1. It is a disaster. The PTO should wave the fee for not filing it electronically.

        It is the end of the year for some clients and everything has to filed. Sheesh.

        1. Hey NW,

          Completely agree. It’s startling that the USPTO apparently has no real “backup plan” to handle such an emergency for an electronic system that is so vital to their operations, as well as those customers who use it. I can’t imagine any major corporation ever leaving such important electronic so vulnerable such a “meltdown,” knowing full well the serious consequences of doing so.

          1. Waive I meant. EG, yes I agree. They are turning the 22nd – 24th as holidays. Maybe they will end up waiving the fee too, but for those that had to get stuff filed, it meant filing it with paper to meet the clients end of year (or quarter.)

            But, EG, I agree. Imagine if Amazon just went down before Christmas for a few days.

  3. I agree with Reyna on this one. I think it harms commerce to able register marks that are going to offend. I don’t think Redskins should be a registered trademark.

    1. Night Writer,

      Will have to agree to disagree with you.

      For some reason, a direct link is not being allowed through the filter, but go to Wikipedia and search for

      Evelyn_Beatrice_Hall

      It is fundamental aspect of this country to NOT be fettered by any sense of “Nannyism” from the government in these types of things.

    2. There is NO harm to commerce – people can still choose how and where they spend their money REGARDLESS of the issue here.

      In fact, the Redskins football team is a perfect example: look at their fan base and the number of people NOT harmed in commerce and choosing to buy jerseys and such.

      Even if dropping – BY THE CHOICE of people, a choice currently and freely available – the team had 125 Million in operating income (per Forbes, as of Sept 2015).

      And the recent drop was attributed not to “harm” from the name, but from the PLAY OF THE TEAM.

      1. I get your point. I think it has to with government involvement and whether that government involvement and the commerce aspect are sufficient to warrant limits. It is clearly linked to the IPR case and things like driving. I don’t think driving should be treated as a privilege but as a right. The more activities the government can move over to the privilege category that we need to function, the more control they have over us.
        But, in the end, I think the problems we are having are from the Constitution being outdated. We need to be more willing to amend the Constitution and see the solution to problems as amending the Constitution and not getting the judges we want in the SCOTUS. (We see that in the anti-patent movement where Google has been vetting the judges to the Fed. Cir. to get the results they want.)

        1. Did you look up Miss Hall on the wiki?

          You should note that this nobler view is the exact opposite of the “nanny” politically “correct” view.

      1. I’d go for class 41: Services consisting of all forms of education of persons or training of animals; services having the basic aim of the entertainment, amusement or recreation of people.

        That should cover commercial speech targeted at becoming president – a position that holds great commercial value (book deals, paid speaking engagements, …)

          1. He’s testing an argument by using reductio ad absurdem. Of course it’s not a reality, but it is in the realm possibility, so you have to accept his premise.

  4. A correct ruling obviously, though I doubt it will have little practical effect as the ultimate value of the right is within the discretion of the jury, who are free to course correct where the Constitution ties the government’s hands.

    I am curious as to how the calculus would change if the act were rewritten to apply to enforcement rather than registration though. For example, if one had to request permission from the office prior to enforcement, and consideration of disparagement was an allowable factor in the discretion to permit, I bet that would be constitutional. In other words, the government could create a situation where it became governmental speech and their prerogative to not have a third party compel their speech would kick in.

    1. Random, I don’t really follow you. If the Redskins sue, it will be for someone using Redskins on their baseball caps or the like trying to confuse folks. I think that should be actionable.

    2. how the calculus would change if the act were rewritten to apply to enforcement rather than registration though.

      No difference.

    3. That system would be even more Constitutionally offensive. Its like combing through people’s social media and individually adjudicating whether they should be eligible to recuperate damages after a car crash.

      The reason the entire idea of basing substantive rights on the content of a party’s speech is prohibited, is that the government cannot be trusted. Under the PTAB’s rationale, they could prevent Catholics from suing in equity, stop NBC from registering any trademarks, strip GE of their patents, and take McDonalds’ real estate without compensation based on a factual finding of “offense”, which exists only in the mind of the government agents adjudicating the case.

  5. Interesting timing for the CAFC to demonstrate a newfound appreciation for the US Constitution.

    Ned – how is that cert petition coming?

    1. anony, all this shows is just how agenda-driven that court is. The court does understand the constitution and does know how to read cases when it wants to.

  6. Perhaps a timely Keynes quote….

    “Words ought to be a little wild, for they are the assault of thought on the unthinking.”

    – John Maynard Keynes –

  7. I suppose we’ll find out shortly how many clever (and very, very funny!) people chose non-disparaging, non-immoral and non-scandalous marks over less less offensive alternatives because of this unconstitutional “government coersion” that’s been going on for almost a century.

    For a while, at least, those super-principled folks out there who never saw an expansion of intellectual property rights they couldn’t cheer will swell with pride every time they seem that little “R” with a circle around it next to some vile expression that would merit a face slap if it ever came out of their own kid’s mouth. What a great country.

    What happens to those famous seven dirty words? Are expressions which use them entitled to registration benefits now as well? Or is the incredible danger that those words pose to children enough to keep them separate?

      1. the Great Country

        Everyone! Shhh! General Hammerbrain is leading us in the Pledge! Please sit down and listen respectfully — especially to the part about “under God”.

          1. and your point is….what exactly?

            Please everyone! Quiet down! The General has something very important to say about the Great Country and the First Amendment but he needs to see some respect first. Can someone please get that woman to quit crying about her dead son? Stuff happens. Besides, he had a marijuana conviction. You don’t like it? Apply for a voter ID at the nearest DMV that’s still open.

            Okay, General, the floor is yours.

        1. it is you that is acting like a crotchety old man here.

          Because the kids these days are all about getting the government to recognize and subsidize racist trademarks. I was wondering what the protests were about. Thanks for clearing that up, “anon.”

          Oh and I’m really sorry to ruin the fun with my “liberal” concerns. Here’s your sheet back. Party on, gramps.

    1. The FCC prevents the seven dirty words from appearing on the public broadcast channels, presumably to prevent a tragedy of the commons and a race to the bottom.

      That is a far cry from here where the government was picking and choosing amongst different (offensive) political expressions. For example they refused ‘Slants’ for a band name while at the same time you could register the most horrifying and offensive phrases imaginable as long as you combined them with the words ‘patent attorney’. While this may well serve some valid policy goal, the first amendment forbids the Federal Government from putting its thumb on the scales of political discourse no matter how well intentioned!

      1. Slashdot,

        To represent a trademark applicant, one only needs to be a member of any bar, not necessarily a patent attorney (if that’s what you were thinking). Many trademark applications are filed without the use of an attorney.

  8. A shockingly bad decision by the court. The government should be allowed to refuse these types of trademarks. Now the government must protect them; get a certificate from the government and everything.

  9. Do we really need to debase ourselves by granting federal registration to every ethnic slur imaginable. The first amendment protects Tam’s right to use a nasty mark, but does it really require that the federal government help him enforce it? We have refused to do so for some time, without harm to the nation.
    Tam may have a political point to make by adopting the mark, which might make his particular use less offensive than other ethnic slur marks, but I don’t think the PTO needs to get into that issue so long as Tam can enforce his mark under common law.

      1. I don’t agree with any of them entirely.
        I agree with the notion that trademarks are commercial speech, subject to lesser First Amendment protections. But enforcement of a trademark is commercial action, not merely speech, entitled to even lesser protection.
        I agree mostly with Lourie: Slant remains free to use mark, as expressive and commercial speech, while the government is free to avoid lending support to the commercial action. Lourie, though, misses the issue that enforcement of a trademark is not protected commercial speech, with no expressive aspect, that the government does not have to support.
        I don’t agree with Dyk, in the notion that Slant’s dual commercial/expressive nature dictates registration: Tam should be free to use the mark under the first amendment, but that does not dictate that he should be entitled to a federal registration and the procedural advantages it confers to litigants. While usage can be viewed as pure speech, enforcement against commercial competitors is commercial speech or commercial action. Dyk fails to see the dichotomy between usage and enforcement.
        I disagree with Dyk’s statement that “I do not think that the government must support, or society tolerate, disparaging trademarks in the name of commercial speech.” I think we have to tolerate it, in the name of expressive speech and commercial speech, but we do not need to support it in the name of commercial speech.
        Reyna’s “orderly flow of commerce” argument is a stretch here, but he aligns with Lourie on the expressive/commercial aspects of the mark without seeing the dichotomy between the mixed expressive/commercial aspects of use and the purely commercial action of enforcement aided by a federal registration.
        I think the rule is justified on the basis that (1) federal registration is commercial speech subject to lesser first amendment protection and (3) enforcement using the federal registration is commercial action and (2) the government has in interest in avoiding the supporting the insult attendant to ethnic slurs used as trademarks.
        In a common law scenario, I would also support lesser protection to ethnic slurs, on the basis of the expressive content and the first amendment protection of competitors to engage in comparable expressive content. If Tam sues another Slant band, isn’t he trying to prevent them from making the same expressive statement he thinks is “free speech”? You should not be able to use trademark rights to quash expressive content (and I think band names are 99% expressive). It’s a fair use concept, bolstered by the purported expressive aspect of the offensive mark which is offered to justify its use.

          1. Section III of the majority opinion applies the Central Hudson test, and gets to the “lawful and misleading” test, which of course every ethnic slur will pass. Then it addresses the substantial government interest test, and fails to identify any interest other than disapproval of the message, and finds that inadequate (and dismisses all of the interests identified by government, when it could have agreed with any one of them). And it misstates the test applied by the USPTO: It does not prohibit marks which the government finds offensive-It prohibits registration of marks which the government can prove are offensive to a substantial portion of the public. (It’s not arbitrary, and not all that vague (at least, no more vague that likelihood of confusion, which we can all handle on a daily basis)).
            So I think the majority confused the correct notion that we have to tolerate all sorts of nasty speech, including ethnic slurs as trademarks, with the notion that we have to grant federally recognized rights which greatly facilitate enforcement of those trademarks. And it misses the perfectly non-expressive aspects of suing someone for trademark infringement. Registration is not just speech, it is a tool for attacking competitors in a purely commercial setting. (Fox News v. Franken notwithstanding).
            Page 43 of the majority opinion is so silly that it suggests that the remainder of the opinion is likewise poorly reasoned. It states the premise that all a federal registration does is get you listed on the federal register, and ignores that it provides substantial support for enforcement actions. But registration is not just a highway sign or a license plate: It is a tool and sometimes a weapon used for commercial action. The speechy aspects of the federal register are inconsequential compared to that.

        1. DC: I think band names are 99% expressive

          Huh? Even if you said band names were “99% descriptive” that would still be a difficult assertion to support (although it’d far closer to the truth).

    1. but does it really require that the federal government help him enforce it?

      Last I checked, the individual entity still has the responsibilities for enforcement.

    2. No DC, we don’t. The Federal government can abstain entirely from registering marks if it so pleases, it merely has to amend that and other portions of the law. As it is, the Federal Government attempting to deny not only “registration” but substantive rights associated with registration simply because it does not like the messages of the marks. Its blatant favoritism based on who are the anointed, and who holds the “correct” views.

      1. Its blatant favoritism based on who are the anointed, and who holds the “correct” views.

        ROTFLMAO

        Who’s being “favored”?

    3. Tam may have a political point to make by adopting the mark

      Or he may simply be trying to attract attention to himself and/or his crxppy band which nobody would otherwise have heard of.

      That would explain a lot, wouldn’t it?

      But, sure, Tam could also be trying to make a “political statement.” Because everybody knows the best way to spread a meme is to sue people who use your meme without your permission.

      I’m still chuckling over Old Man Anon’s rant about “political correctness.” It’s okay, Grandpa! You and your buddies are still 100% free to rant about whatever you want. Nobody’s going to lock you up or make you pay a fine. Just try to remember — and I know this is hard — but nobody is required to genuflect before your toxic horses–t. Do keep watching out for those “commies”, though! They’re coming for your guns!

  10. “Judge Dyk’s partial dissent argues that the statute itself is not “facially unconstitutional”, but has been applied in an unconstitutional manner in this particular case. Judge Dyk’s approach would leave intact the prohibition on registering marks that “disparage . . . or bring into contempt, or disrepute,” but would block the government from refusing registration based upon whether or not the government disagrees with a mark’s message. ”

    I think Dyk was limiting his remarks to political messages, which he found TAM’s mark to be.

    On the whole, I think O’Malley’s concurrence about vagueness might illustrate the problem with Dyk’s approach. How does one rationally choose between speech that disparages, etc., from speech that is intended to convey a political message? Are we not into the eye of the beholder situation once again? Is that a real test?

    1. Dyk’s approach would uphold the ban on the registration of the Redskins Mark because it only disparages and does not have a political message.

      1. It could be taken as having the exact same type of message, Ned.

        They are both “race-related” terms.

        The individual message is of course different for each (and that’s kind of the point is it not?).

        With Tam, it is his portrayal of music.
        With the football team, it is the reclaiming of the term for a noble use (Sports teams WANT people to cheer FOR them – it is only with the spurring of political correctness groups that the name was being portrayed in a negative manner**)

        **aside from the team’s play on the field – albeit this year they are doing better.

        1. anon, compare Redskins with Redskins S*ck . Under Dyk’s approach, the former might be denied registration, the latter not because it has a message.

    2. Ned: How does one rationally choose between speech that disparages, etc., from speech that is intended to convey a political message?

      Generally speaking, you don’t choose between those two things and that’s the point. Discerning the applicant’s “intent to convey a political message” doesn’t end the analysis. Objective evidence that the applicant’s mark is deemed disparaging is also considered.

      And just in case you are prone to forget: the applicant remains free to say whatever it wants. It just doesn’t qualify for government subsidization.

  11. While the result is correct, I did wonder whether the Federal Circuit would come to the result, or if SCOTUS would have to step in and write, basically, this exact same opinion. At worst SCOTUS is 7-2 in favor of affirmance as it stands.

    1. The Federal Circuit will not get one Justice on this, I think. Justices Thomas and Alito, for example, approach Intellectual Property as a public right, so they would be inclined to rule this as government speech.

      1. The source identifier is a form of “public right” and is government speech….?

        If that is the case, why is the government NOT the one footing the bill for all the actions enforcing that speech?

        J, you are too far into the weeds, my friend.

          1. Yes, and if you are arrested for protesting in front of City Hall because you think the Mayor is corrupt you have to use the courts to get habeus as well.

            The “courts are government” argument is a nonstarter. The question is whether the government can condition rights on you agreeing with the political positions of government officials.

              1. No, its more like them refusing to enforce property rights against a trespasser because your lawn has a pro-gun rights sign in it, which happens to offend a subset of bureaucrats.

                1. You didn’t tell me why my example doesn’t fit.

                  I am discussing the threshold question whether the 1st amendment is invoked, and your examples presume that it does.

                2. Your examples are wrong…because the First Amendment is invoked. Offense is not substantive, like a restrictive covenant against allowing Mexicans to live in a house is.

                  Now, on your threshold question, it is invoked because of Ward v. Rock Against Racism (specifically), and generally the First Amendment principle that the government cannot adopt a regulation of speech based on their agreement/disagreement (taking offense) with that speech.

                  Some argue this is not a regulation of speech, that is incorrect because you lose statutory rights compared to other citizens because the government doesn’t agree with you. The government does not have to create the rights, but once it does it cannot limit them based on the content of speech because that is chilling to such speech. For instance, if one cannot copyright books documenting the Holocaust, then less of such books will be written as there is no profit in it. Similarly, if you cannot trademark an offensive mark (I.E. Redskins), this is a significant financial loss, and you feel compelled by such action to modify your speech to comply with what is “government approved”.

                  Perhaps you are rich enough (like an NFL owner) to ultimately keep it, but imagine you are a small App company, and your trademark is found offensive, and thus tens of copycat apps enter the itunes store and dilute your brand. You are essentially ruined because you picked an edgy mark, so you never pick the edgy mark to begin with, or next time you design a totally PC mark.

                3. Dude, you cited a case that rejected a 1st amendment challenge. I scanned the opinion and found no dicta that is especially supportive of your position.

                  It’s a regulation of speech if it removes a statutory right? Texas law allows for vanity plates, it’s a statutory right to personalize plates. Yet Texas was allowed to reject plates with a Confederate flag on it. Presumably the government could reject an offensive term on the plates, too.

                  Now I know that opinion was a fractured 5-4 decision, but I see nothing in the dissent that suggests what you are suggesting. In fact, the dissent suggests that the inactivity of the government is a sign that it is private speech. Surely government registration is substantial government activity?

                  I’ll need to see a citation to your claim that the relationship of a statutory right and public expression.

                4. If the registration itself is considered government speech, that is possible. However, that is not the issue. It is that registration affects more than merely registration.

                  In Sons of Confederate Veterans one thing the court does is it distinguished a license plate from a bumper sticker. You don’t lose your right to drive on the roads because of a confederate bumper sticker. Similarly, IMO they could refuse to register offensive marks in the gazette (being speech) but would have to grant all the same rights in court to marks not registered on the grounds of offensiveness.

                  Even in Sons, the recognized even government speech cases implicate the First Amendment, “Our determination that Texas’s specialty license plate designs are government speech does not mean that the designs do not also implicate the free speech rights of private persons. We have acknowledged that drivers who display a State’s selected license plate designs convey the messages communicated through those designs.” And they also said, “Texas cannot require SCV to convey “the State’s ideological message,””, near the end of the opinion. When they say require (in a case I generally feel conveys one of the most limited possible interpretation of the First Amendment, and the broadest possible interpretation of government speech) it seems to reason that they also mean “strongly financially coerce”.

                5. By the way, I am allowing the analogy of real property and intellectual property for purposes of this example. The former is a liberty right while the other is a claim right, which deserve different treatment on a Constitutional level.

                6. You don’t lose your right to practice the trademark if the government refuses to register it. There is a difference between government requiring you to say something and you requiring the government to do something.

                  And I understand that on Christmas you don’t want to look up citations, but I wonder where does it say that the 1st amendment stands that the government must create a space for you to speak. I always thought it guaranteed the right to say something without government interference.

                  Your quotations of the Sons of Confederacy case that illustrate some private speech is involved ties that case closer to In re Tam. I think that helps my position given the former’s final holding.

                7. J,

                  You do not seem able to grasp that it is the selectivity based on content (message) that is the issue here.

                  All of this “enforcement” versus “registration” is nothing but a smokescreen.

      1. Very, very, very doubtful on that Ned.

        (but one does not ever know…)

        I thought that you would be encouraged by a finding of a law by COngress violating the Constitution… 😉

      2. Ned,

        Why (and on what basis) would SCOTUS adopt Dyk’s position? As anon indicates “viewpoint discrimination is viewpoint discrimination.”

        The reason the trademark registration was denied in In re Tam (and cancelled in Pro-Football) was because of CONTENT. That means the governmental exclusion has to pass the toughest standard, namely strict scrutiny (about nigh impossible).

        1. EG, I don’ t know how one can make the distinctions the Dyk is calling for in regular cases.

          Also, I agree with O’Malley that the statute is vague and indefinite because one cannot tell with any particular degree of reliability when a mark disparages and when mark does not. When the Redskins Mark was first registered it was not considered disparaging. It later became disparaging as society changed.

          1. Ned,

            To O’Malley’s indefiniteness point, the district court judge in Pro-Football ruled that “Redskin” was disparaging to a substantial proportion of the Native American population. What constitutes “substantial proportion”?

            BTW, I’m 1/32 Native American (Cherokee). I’m much more concerned that our Native American culture (much of it an oral tradition) is vanishing rapidly.

            1. EG, well I might be descended from Pocahontas – my mom’s family name is Rolfe. However, I think this is just fantasy myself.

              But as to the Cherokee, I fully understand how that tribe in particular might feel about America especially about a certain president whose image adorns one of our bills of currency and who founded one of our national parties.

            2. Your culture has been misappropriated. Cherokees, Lakotas, Navajos, ect., have little say on how their culture is used in the media.

              University of Illinois would dress “Chief” in Lakota clothes, though the Illinois tribes never once wore such things. Washington fans come in headdresses to cheer on a team, not caring what it actually means.

              Honestly, the name is not so bad as the cultural misappropriation. Florida State has a close relationship with the Seminoles, so the Seminoles have control over the image of the mascot. Same as Central Michigan and the Chippewas. The Blackhawks discourage fans from coming in outfits. All these steps would show respect to the culture that the Washington franchise has never done.

              This would go away if they were the Washington Patawomecks and were accountable to a tribe.

        1. As the sole member of the MalcolmWhinersSithHighlander(therecanbeonlyone)WhereWillITStopWeAreTrueEagles tribe, your speech here is deeply offensive and I demand that your post be excised.

          /off sardonic bemusement

        2. anon, you are straw-manning the heck out of me. I have presented an argument on why the Washington team name is inappropriate other than PC: cultural misappropriation. Native American cultures are still very much alive, but are not given the respect here to dictate how their cultures might be used. Snyder is making money off of something that doesn’t belong to him. As a big intellectual property supporter, I would think the argument would at least give you something to think about…

          1. J,

            You use the term “straw-manning,” but I do not think that you understand what that term means.

            I am NOT creating a weak position just to knock it down.

            I AM pointing out the weakness of YOUR position with same apt commentary.

            Point blank on your latest post: the “item” you are seeking “protection” for is NOT the type of thing that Intellectual Property laws are meant to protect.

            No Individual** has ANY type of property rights to “culture.”

            You are MIS-applying an entire area of law and for what?

            “Respect?’ Sounds rather “politically correct” to me.

            You are correct in that I am a big intellectual property supporter. Your problem is that you are not even recognizing that you are in the wrong domain.

    1. Malcolm’s feelings are driven by his (liberal) desire for political correctness (which is all about the political and nothing about the correct).

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