Matal v Tam: Only I Can Disparage You!

The Supreme Court has affirmed that Trademark law’s restriction on registration of disparaging marks violates the free speech provision of the US Constitution.

Read it: 15-1293_1o13

Although the court’s logic is largely incomprehensible, the result is simple: the PTO will begin allowing registration of disparaging marks and will not cancel Registered marks because they are disparaging.

Although not at issue here, disparaging marks will likely be somewhat more difficult to enforce based upon the greater expressive content of the speech.

 

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.

133 thoughts on “Matal v Tam: Only I Can Disparage You!

  1. Behind a paywall, Scotusblog teases with this:

    In an op-ed in The Wall Street Journal, Daniel Henninger weighs in on Matal v. Tam, in which the justices held last week that a ban on the registration of disparaging trademarks violates the First Amendment, arguing that the decision “won’t stop the political coercion cops, who are still deploying intimidation and shaming tactics beyond the reach of the courts and Constitution.”

    link to scotusblog.com

  2. MAGAin’ up in the decision, MAGAin’ all around.

    HAHHAAHAHAAHAHAAHAHAHAAH

    “President Trump has stoked anxiety among Indian techies, who make up the majority of applicants for the H-1B visa program for highly skilled foreign workers. Trump has talked about sharply restricting H-1Bs, and this year, for the first time, the number of applications dropped a staggering 16 percent as companies prepared for Trump’s immigration cutbacks. Instead, Indian outsourcing companies such as Infosys started recruiting Americans, bowing to Trump’s calls for “America First.””

    link to washingtonpost.com

    1. 6,

      That article speaks less to your point than a different linked article at the bottom:

      link to washingtonpost.com

      Quite in fact, the article that you posted is contradicted by the “better article” and speaks MORE to the coming problem for IT workers: surplus (and expendable) jobs. The focus of your linked article is the fallout of this condition in India, but one can easily see that the same type of fall-out may apply in this country as well.

      The “better” article indicates that less jobs going to the US means more jobs and opportunities staying in India, while the article that you actually supplied indicates that even without the influx of possible additional workers, the existing worker base in India is seeing an unprecedented squeeze from over-capacity.

      Taking the two articles together paints an even more exacerbated over-supply in India,

      As several others have noted, the more power Big Corp obtains (with weaker patents and with stronger Trade Secret laws), the more the typical software engineer becomes an expendable “widget.”

      The unthinking lemmings that lap up the Kool-Aid from sites such as techdirt and slashdot will soon realize that their own ‘lockstep” march is approaching the top of the cliff.

      1. the more power Big Corp obtains (with weaker patents

        Sure, that makes sense.

        Too bad there aren’t any other ways to minimize “Big Corp power” because all the other ways are communist. Right, “anon”? LOL

        And thank goodness Mango Hairball is all about “the little guy”. He’s totally not a st 00 ge for giant corporate interests. Which is why your Bernie Sanders “protest vote” means so much. You’re a very serious person, “anon.” Very, very serious.

        1. Too bad there aren’t any other ways to minimize “Big Corp power” because all the other ways are communist. Right, “anon”? LOL

          That sure is a pretty straw man that you have constructed there Malcolm.

          You do realize that there is more than one philosophy that is set against strong patent rights, right?

          This is not a difficult concept (unless, like for you, you want it to be a difficult concept).

          And thank goodness Mango Hairball is all about “the little guy”

          An odd comment that has absol;utley zero to do with anything that I have ever said about patents and patent law.

          You must be confused and want to attribute someone else’s view to me.

          As for “very serious,” well your poker tell of you having nothing of merit to actually say screams volumes for itself.

          Here’s a hint Malcolm: have something to actually say when you come to post a comment. That way, you won’t look like such an absolute doosh.

      2. I don’t understand the overall point of your post anon but your article just seems to indicate that some indians belieb in India being able to withstand a reduction in H1-B’s granted in the US. Great, I’m glad for them. Let them Make India Great for the First Time!

        1. The overall point is that the story you linked to does not support your contentions.

          The overall point is that the lemmings are about to crest the top of their march up the hill.

  3. I know I’m a simpleton, but I’m having difficulty squaring this decision with that license plate decision (IIRC also authored by Alito).

    Let’s suppose that trademarks are speech. The circled R -®- that people stick on their registered TM indicates some endorsement by the government – some endorsement of the speech.

    Offensive license plates are government speech because the picture is right there with the name of the state, so the state is expressing some endorsement of that speech.

    How are these so different? So, a state can elect not to include a Redskins mark on a specialty plate, but the Federal government cannot elect not to provide a trademark registration for the same mark?

    If license plates are government speech, aren’t they equally schizophrenic? My state is apparently a fan of every major sports team, a ton of different universities, every season, and lots of different organizations with competing interests.

    And how does declining registration of a trademark (by way of disparagement) restrict free speech? No one says you cannot use your mark. And, you may not have Federal protection, but when this happened to the Redskins, I was assured that the Redskins’ marks would still be enforceable under state/common law.

    Back to the fundamental issue of whether a mark is speech at all. Doesn’t this call the whole TM system into question? If a mark is speech, then every registration should include a free speech consideration, because every trademark registration is a governmental restriction on speech. Every case ever decided may be called to question because free speech should have been considered. An alleged infringer’s use or breadth of the mark should be narrowly considered so as to minimize the mark’s restriction on free speech.

    Does this decision have an impact on restricted patents? Can we now patent death machines? There’s probably not a lot of prior art out there on suicide machines – lots of room in the field.

    1. TLG,

      You have many many many things incorrect right from the start.

      In both this case dealing with trademarks and in the Texas case dealing with the Texas license plates.

      Take a few classes: First Amendment Law and Trademark Law to begin with.

      1. …but do not take them from any professors who cannot understand the instant case – that would be like the blind leading the blind.

    2. I’m having difficulty squaring this decision with that license plate decision (IIRC also authored by Alito).

      Like yourself, I was taken by the analogy, but I have to say that Justice Alito’s explanations for distinguishing Walker are among the more persuasive parts of this opinion. Basically, it comes down to the fact that lots of people see Texas license plates every day, and among those who do, nearly all of them think that Texas license plates have something to do with Texas. Meanwhile few people see (or even think about) the Principal and Secondary trademark registers each day, and even those who do think more about the marks (which are the creation of the individual registrants) than about the registers themselves (which are the government property that is supposedly analogous to the license plate).

      In other words, whether the analogy does or does not hold in the abstract, in the lived reality the connection between the Principal Register and the U.S. government is just much more attenuated than the connection between a physical license plate and the state of Texas. Given, as Justice Alito said, that Walker was just barely on one side of the government speech line, if you dilute the factual predicates of Walker even a little (as Tam does), then you end up on the other side of the line. Much else of the Tam opinion may have been tendentious or circular, but this part seems to me to be a fair and solid analysis.

      I will say, however, that there is some remaining analogy between Walker and Tam. During the oral argument in Walker the attorney for Texas acknowledged that if the SCotUS were to rule against them (that is, to hold that if Texas allows Rotary Clubs and Colleges to have specialty plates, then it must also allow the Sons of Confederate Veterans to have a plate), then Texas would simply stop allowing specialty plates. In other words, Texas is not constitutionally required to provide this forum, and if the price for making the forum available is that they must make it available to those with a truly vile message, then Texas would simply stop providing the forum at all.

      The PTO has no authority to say that it will stop registering marks, because it is a creature of Congress, so the PTO made no such threat at oral arguments in Tam. Nevertheless, how will Congress respond once the registrations for Al Qaeda needs to finish the job or Your daughter is next on my list to ________ and _______ are granted. Just like the cuts that came to arts funding that came after the Serrano and Maplethorpe controversies, it is entirely plausible that Congress will decide that if it cannot exclude objectionable marks, well, it does not have to provide any registration scheme at all.

      1. Greg Meanwhile few people see (or even think about) the Principal and Secondary trademark registers each day, and even those who do think more about the marks (which are the creation of the individual registrants) than about the registers themselves (which are the government property that is supposedly analogous to the license plate).

        People see that little R with a circle around it all the time. It means something “official” to most people. It means “registered.” It represents a stamp of “approval” — the Fed Government’s criteria has been met.

        The most important point of TLG’s post, I think, was to recognize that this “inconsistency means no speech” argument is a pile of b@loney.

        1. People see that little R with a circle around it all the time. It means something “official” to most people.

          I am sure it means something “official” to most people, but it is a very small something. That is Justice Alito’s point.

          After all, if I do not have a registration, but I put the (R) there anyway, there is no penalty. Similarly, if I have a registration, but I omit the (R), there is also no penalty. In other words, the (R) has no meaningful connection to government registration, and I dare say that most people know that (to the extent that they think of it at all). People frequently mis-use the (R) without consequence. It is, often as not, the legal equivalent of a white lie.

          By contrast, making your own “Texas” license plate is neither common nor trivial in its consequences.

          In any event, as Justice Alito noted, Walker laid down a three part test, and the PTO could not make an adequate showing on all three prongs. Anyone who wants to can read it, so I will not recapitulate it here. Suffice it to say, I did not think that Justice Alito was correct to say that the PTO fails all three prongs of the test, but I am inclined to agree with the Court that neither could the PTO unambiguously satisfy all three prongs. You have to draw a line somewhere, and the Court is telling us that the line for government speech lies somewhere between Walker and Tam. That is fair enough.

          I agree with your bigger point, however, that setting aside the government speech issue, there ought not to be a free-speech problem here. Registering a trademark ought not to be seen as an act of speech. For better or worse, however, now it is. At least this decision helps us to recognize the free-speech issue next time an analogous case arrives.

          1. Greg: You have to draw a line somewhere, and the Court is telling us that the line for government speech lies somewhere between Walker and Tam.

            No doubt about the line requirement.

            I’m not sure that “between” is the best term here. It seems to me that the main distinction between Walker and Tam is the context (registered trademarks versus registered license plates). They’re more like poles around which results can congregate, rather than lines.

      2. Much else of the Tam opinion may have been tendentious or circular,

        Still grasping at the failed arguments, eh Greg?

        Your vigorous search for some confirmation bias in the face of being totally wrong has been rather amusing.

        For a real hoot, just go back and revisit our dialogues.

        If you ever settle down and try to learn something from this, read again what I tried to impress upon you, and think – just think – through this, you can thank me at your convenience.

        1. Your vigorous search for some confirmation bias in the face of being totally wrong has been rather amusing.

          I am gratified to know that I provide the small but useful task of amusing someone.

          If you ever settle down and try to learn something from this, read again what I tried to impress upon you, and think – just think – through this, you can thank me at your convenience.

          Believe it or not, I have learned from reading your remarks on this case and I do thank you. I mean that sincerely. Just because I find some parts of Justice Alito’s opinion unconvincing does not mean that I am totally deaf to some of the better points you have made in explaining why the Court came down where it did. I believe that my understanding of the Court’s holding here is better for having read your arguments on the relevant points.

    3. TLG And how does declining registration of a trademark (by way of disparagement) restrict free speech?

      It doesn’t. In fact, granting the registration has a greater negative impact on free expression.

      As has been noted already, our l 00 natic preznit has threatened to sue critics by asserting its registered trademarks against them. That’s how it works.

      We’ll see how long it takes before Tam decides to sue someone else who wants to help him in his (misguided and fake) quest to “take back” the term “slants”.

    4. TLG: every registration should include a free speech consideration, because every trademark registration is a governmental restriction on speech.

      I think there are First Amendment considerations already baked in. It’s one of the reasons that there are other limits on marks, e.g., “purely descriptive” marks are disallowed.

      I’m already seeing people trying to defend the disparagement statutes in view of this odd opinion. Those people are flailing hard.

    5. “The circled R -®- that people stick on their registered TM indicates some endorsement by the government – some endorsement of the speech.”

      Nah, trademarks are not an endorsement according to this court. That’s because trademarks were around since before the merican gubmit took over recognizing them formally in the lawl apparently.

  4. Senator Sessions, you seem to be answering a question I didn’t ask.

    Furthermore, because what never happens?

    And if it never happens, then once again, what difference does the copyright make?

  5. DC: Although the court’s logic is largely incomprehensible

    You read my mind. Strawmen abound. I don’t blame the court. I blame the attorneys for the government who did a less than stellar job here. I’ll grant that it wasn’t the easiest case, given the broad language in the statute and the trademark at issue which was relatively close to the line.

    The most glaring issue with the Court’s “logic” is, of course, all the lip-service given to “free speech” principles to back up a decision that turns “disparagement” of wealthy trademark owners into a legal liability. Our very own fake preznit has used his trademark rights to threaten and silence his critics. The bottom line is that this decision makes free speech less free than it was. Why not just come out and say it, Sammy?

    My favorite head scratcher in the opinion is where Alito appears to argue that expressive trademarks can’t possibly be interpreted to represent an expression of the government’s views because it would mean that the government is schizophrenic or hypocritical. Seriously. And as support for this bizarre proposition, Alito strays off the reservation and cites trademarks that aren’t remotely disparaging to any ethnic group (“Global Warming Is Good,” “Abolish Ab0rtion” etc)! Footnote 9 on page 15.

    The other more extraordinary bit that leapt out at me was this:

    Registration of the offensive marks that Tam cites is likely attributable not to the acceptance of his interpretation of the clause but to other factors—most likely the regrettable attitudes and sensibilities of the time in question.

    LOL This is the ridiculous “r@cism is a thing of the past” fantasy that this right-leaning Court has invoked repeatedly to open (or re-open) the doors to government-sanctioned r@cist policies (e.g., gerrymandering and voter suppression directed “with surgical precision” at minimizing the rights of minorities). New flash for Alito: (1) the “time in question” is right now — we’re living in it. And (2) trademarks are forever, provided that they’re being used.

    Also, what does Alito find “regrettable” about the “attitudes and sensibilities” of this undefined “time in question”? Why does he bother to express his subjective opinion about this “time in question” when it is utterly irrelevant to the analysis?

    Alito writes: It applies to trademarks like the following: “Down with r@cists,” “Down with s e xists,” “Down with h 0 m 0 phobes.” It is not an anti-discrimination clause; it is a happy-talk clause.

    So what? Remind everyone, Sammy: what’s the point of trademarks? Is the purpose of the system to enable people to “own” snappy negative remarks about other groups of people? If the purpose is something different, then it seems perfectly appropriate to have a statute that eliminates the trademarks that don’t fulfill the purpose. In other words, what is the problem with limiting to trademarks to non-disparaging marks? As long as everyone’s disparagement is treated equally, there’s no “viewpoint discrimination” there.

    Sammy: the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination.

    Is that what’s required for trademark content regulation to be Constitutional? It has to “support invidious discrimination”? Good grief.

    In any event, the floodgates are open for registering trademarks on the most appalling sentiments that any human being has ever expressed. Thank goodness we don’t live in a “regrettable time”!

          1. Billy is you, Billy. Rhymes with silly.

            I’m still not seeing the “irony”, crybaby. So tell everyone: where is the “irony.”

            Go ahead, Billy. You’re a great communicator, after all. One of the best. LOL

    1. “Is the purpose of the system to enable people to “own” snappy negative remarks about other groups of people? ”

      I don’t understand your problem with this. If only one person owns the mark, then 1) you know who is saying it and 2) fewer people can say it.

      Would you rather that the offensive phrase be printed on tee shirts by thousands of unidentified suppliers?

      1. Would you rather that the offensive phrase be printed on tee shirts by thousands of unidentified suppliers?

        Because that never happens.

        You’re a piece of work.

    2. ” we’re living in it”

      ^MM literally still living in the 70’s.

      Can’t wait till the boomer’s minds that are so mind controlled from 40+ years ago die off.

      “So what?”

      So there’s this new thing called free speech that is an assurance that all your speech doesn’t have to be happy time talk. Surely you’ve heard of it, it was super big in the 60’s.

      “In other words, what is the problem with limiting to trademarks to non-disparaging marks?”

      I thought they explained this to you Boomer. Ye olde constitution.

      “As long as everyone’s disparagement is treated equally, there’s no “viewpoint discrimination” there.”

      Sure there is. Tam’s case is a literal example thereof. Lee had the viewpoint that Tam’s trademark name was disparaging. Tam’s viewpoint was that it wasn’t, and wanted to normalize the phrase through his muh activisms. But his viewpoint was discrim’nated agin by Lee.

      “Is that what’s required for trademark content regulation to be Constitutional? It has to “support invidious discrimination”? Good grief.”

      To be fair, it probably still won’t pass muster.

      “In any event, the floodgates are open for registering trademarks on the most appalling sentiments that any human being has ever expressed.”

      Oh noes, too much speech! Oh noes!

      1. too much speech

        Trademarks are marks, not “speech”.

        Trademarks are regularly used to threaten people who do speak, as I already pointed out. Let me know if you’re confused by that.

    3. This statement of Malcolm’s is utter
      C
      R
      P:

      a decision that turns “disparagement” of wealthy trademark owners into a legal liability. Our very own fake preznit has used his trademark rights to threaten and silence his critics. The bottom line is that this decision makes free speech less free than it was.

      First, there is zero tie from this decision to ANY notion of what Trump is doing or has done.

      Second, there is zero impact of “legal liability” to ANY trademark owner – wealthy or not.

      Third, you whine about less free speech (with your own trademark zero touchstone to reality) and then turn around whine about floodgates being opened.

      Malcolm, see posts 3.1.2 and 3.1.1.1.1.

      You are STILL not even remotely close yet.

      Try without ad hominem – that’s just too much of a crutch for you.

      1. there is zero tie from this decision to ANY notion of what Trump is doing or has done.

        LOLOLOLOLOLOLOLOL

        Remember, folks: “anon” claims to have cast a “protest vote” for Bernie Sanders. Sure he did. He’s not one of the usual rightwing glibertarian patent maximalists. Nope. He’s really really different. Sure he is.

        Meanwhile, the “tie” from Emperor Mango Hairball to this case is exactly what I said it was.

      2. “anon” Third, you whine about less free speech (with your own trademark zero touchstone to reality) and then turn around whine about floodgates being opened.

        I said that the floodgates are open on trademarks that allow you to “own” disparaging speech, you silly little boy.

            1. There’s no “contrast” here. Pull your head out of your behind and stop pretending to be born yesterday.

              I’m expressing my own point of view and also explaining how the case affects everybody. My view is that trademarks are marks, i.e., to the extent that there is any expressive “speech” involved, the right to control that speech exists for a very very very limited purpose.

              Likewise, patents are rights represented by words on a paper. They’re not “speech”. But they do allow you to “own” (i.e., exert control over others’) speech (the junky ineligible patents do this, anyway), which is a problem.

              Now, if you’re going to insist that trademarks are “speech”, then it’s fair to come after that position with limitations based on (1) its commercial nature and (2) whose backing that “speech” up with registration (i.e., the government).

              Remember what the case is about: it’s about whether the failure to register a disparaging mark is “viewpoint discrimination.” I think it’s absurd to conclude that the answer is yes. We’ll find out how absurd shortly when the Supreme Court does backflips to avoid tripping over itself in defense of all the other “viewpoints” that are “discriminated against” by a zillion other statutes.

              Or maybe we’ll create a big exception for statutes involving the flag. Because … flag! So serious. So important. Wave it, bro’! You look s00per c00l!

              1. “fair to come after that position with limitations based on (1) its commercial nature”

                Not in #Merica boomer.

                “whose backing that “speech” up with registration (i.e., the government)”

                Mmmmm, that’s not really the case. The gubmit isn’t really “backing up” the speech. The gubmit is, formally and in substance, from the explanation in the decision, merely officially recognizing something that already existed before the gubmit took over officially doing trademarks as an Merican gubmit thing. Because trademarks existed going waaaaaay back in the lawl before the US gubmit got explicitly involved.

                “Remember what the case is about: it’s about whether the failure to register a disparaging mark is “viewpoint discrimination.””

                Technically it’s about whether or not in this specific case whether the failure to register a disparaging mark was viewpoint discrimination and whether it might happen in other instances as well. Turns out it was iirc.

                “I think it’s absurd to conclude that the answer is yes. ”

                #Merica wins over lefties. WHEEEEEEEEEEEEWWWWW!

                1. I have a few Liberal Left friends and all of them seem genuinely perplexed by this case.

                  It’s as if buying into the Liberal Left mantra on PC makes it impossible to critically think about what the First Amendment actually protects.

                2. anon, once it is determined that registration does not make the mark government speech, and it can censor itself, then it the issue clearly becomes whether the government can censor private speech.

                  I take it then that your lefty friends simply do not understand why the government cannot sensor the content of private speech?

                3. “I have a few Liberal Left friends and all of them seem genuinely perplexed by this case.

                  It’s as if buying into the Liberal Left mantra on PC makes it impossible to critically think about what the First Amendment actually protects.”

                  Color me completely not surprised.

                4. “anon” anon>the Liberal Left mantra on PC

                  LOLOLOLOL

                  Can you pack any more “mantras” into 6 words? LOL

                5. Malcolm,

                  Are you trying to make a point?

                  If you are, then you have failed.

                  Maybe try to use those vaunted “English” language skills you so often seem to want to pat yourself on the back with so often.

                  That, and try posting without ad hominem. It seems that you are so intent on the ad hominem, that you aren’t actually saying anything at all.

          1. There’s no “contrast” here. Pull your head out of your behind and stop pretending to be born yesterday.

            I’m expressing my own point of view and also explaining how the case affects everybody. My view is that trademarks are marks, i.e., to the extent that there is any expressive “speech” involved, the right to control that speech exists for a very very very limited purpose.

            Likewise, patents are rights represented by words on a paper. They’re not “speech”. But they do allow you to “own” (i.e., exert control over others’) speech (the junky ineligible patents do this, anyway), which is a problem.

            Now, if you’re going to insist that trademarks are “speech”, then it’s fair to come after that position with limitations based on (1) its commercial nature and (2) whose backing that “speech” up with registration (i.e., the government).

            Remember what the case is about: it’s about whether the failure to register a disparaging mark is “viewpoint discrimination.” I think it’s absurd to conclude that the answer is yes. We’ll find out how absurd shortly when the Supreme Court does backflips to avoid tripping over itself in defense of all the other “viewpoints” that are “discriminated against” by a zillion other statutes.

            Or maybe we’ll create a big exception for statutes involving the flag. Because … flag! So serious. So important. Wave it, bro’! You look s00per c00l!

    4. Well, MM, I tend to agree with your analysis. However, if you like a court calling something black, white, just read the court’s analysis of McCormick Harvesting in MCM Portfolio.

  6. DC: Although the court’s logic is largely incomprehensible

    You read my mind. Strawmen abound. I don’t blame the court. I blame the attorneys for the government who did a less than stellar job here. I’ll grant that it wasn’t the easiest case, given the broad language in the statute and the trademark at issue which was relatively close to the line.

    The most glaring issue with the Court’s “logic” is, of course, all the lip-service given to “free speech” principles to back up a decision that turns “disparagement” of wealthy trademark owners into a legal liability. Our very own fake preznit has used his trademark rights to threaten and silence his critics. The bottom line is that this decision makes free speech less free than it was. Why not just come out and say it, Sammy?

    My favorite head scratcher in the opinion is where Alito appears to argue that expressive trademarks can’t possibly be interpreted to represent an expression of the government’s views because it would mean that the government is schizophrenic or hypocritical. Seriously. And as support for this bizarre proposition, Alito strays off the reservation and cites trademarks that aren’t remotely disparaging to any ethnic group (“Global Warming Is Good,” “Abolish Ab0rtion” etc)! Footnote 9 on page 15.

    The other more extraordinary bit that leapt out at me was this:

    Registration of the offensive marks that Tam cites is likely attributable not to the acceptance of his interpretation of the clause but to other factors—most likely the regrettable attitudes and sensibilities of the time in question.

    LOL This is the ridiculous “r@cism is a thing of the past” fantasy that this right-leaning Court has invoked repeatedly to open (or re-open) the doors to government-sanctioned r@cist policies (e.g., gerrymandering and voter suppression directed “with surgical precision” at minimizing the rights of minorities). New flash for Alito: (1) the “time in question” is right now — we’re living in it. And (2) trademarks are forever, provided that they’re being used.

    Also, what does Alito find “regrettable” about the “attitudes and sensibilities” of this undefined “time in question”? Why does he bother to express his subjective opinion about this “time in question” when it is utterly irrelevant to the analysis?

    Alito writes: It applies to trademarks like the following: “Down with r@cists,” “Down with s e xists,” “Down with h0m0phobes.” It is not an anti-discrimination clause; it is a happy-talk clause.

    So what? Remind everyone, Sammy: what’s the point of trademarks? Is the purpose of the system to enable people to “own” snappy negative remarks about other groups of people? If the purpose is something different, then it seems perfectly appropriate to have a statute that eliminates the trademarks that don’t fulfill the purpose. In other words, what is the problem with limiting to trademarks to non-disparaging marks? As long as everyone’s disparagement is treated equally, there’s no “viewpoint discrimination” there.

    Sammy: the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination.

    Is that what’s required for trademark content regulation to be Constitutional? It has to “support invidious discrimination”? Good grief.

    In any event, the floodgates are open for registering trademarks on the most appalling sentiments that any human being has ever expressed. Thank goodness we don’t live in a “regrettable time”!

  7. The alternate universe in which the CAFC and its “clients” live:

    while Cole Kepro maintains that “these license agreements were not entered
    into for the purpose of settling patent infringement litigation,” Appellant Br. 57, this argument is significantly weakened by one of the submitted licenses, which expressly recites the parties’ wishes to resolve an ongoing patent litigation by entering into the licensing agreement.

    The “argument” is “weakened”? It’s like saying that the “argument” that 2+2=5 is “weakened” by the fact that 2+2 actually equals 4. In the rest of the universe, this would be called “making a false statement to the court without a reasonable excuse for doing so.”

    C’mon, CAFC. Use the tools we’ve given you to clean up the profession.

    Case: COLE KEPRO INTERNATIONAL, LLC v. VSR INDUSTRIES, INC.

  8. The Supreme Court “held” that named respondent Simon Tam was the “lead singer” of his band. He’s not. Tam is the band’s founder and bassist, but the more energetic and magnetic Ken Shima is their frontman and lead singer since 2014. Pretty good band, BTW.

  9. Like SCOTUS’ screw up with Citizens United equating “spending money” with speech, they get it wrong again. A trademark is not speech – not even commercial speech. (Yes, I would overturn those cases that hold a trademark is speech.)

    A trademark is an *identifier*. We can’t use the numbers 1, 2, 3,… for everything so we substitute graphics and words and if the identifier is unique within a class of good or services, here’s your registration. Plain and simple – a mark draws a line between the product/service and the provider of the productservice.

    Non-registration of a mark does not prevent the word’s or symbol’s use as speech, it only prevents its use as an identifier of goods. Can the words “THE SLANTS” have meaning as speech? Sure, but when used to identify a band from amongst other bands, there is no speech content at all.

    Likelihood of confusion is the test for whether a trademark infringes on the rights of others. That test does not contain a factor that says “if two trademarks mean the same thing, they infringe.” The test’s factors are about similarity, look, sound, products, etc. The free speech message that a mark conveys could be used as a factor, but only as a comparison of the marks *as an identifier.* If the similarity of similar marks are conveying the same impression, one may be infringing on the other. But it is not because of free speech principles, it is because the impression of the identifying characteristics are similar. What the speech means is irrelevant. If it is relevant, then a dissimilar mark that conveys a similar message can now be attacked for infringement. For example, can the THE SLANTS and THE THIN-EYES be registered as marks for a band wanting to “take back” the disparaging nature of the phrase.

    I frankly don’t care about the disparagement clause. I say register whatever you want. If someone doesn’t like the product with a particular mark, then don’t buy it. But SCOTUS’s reasoning like in most of its IP cases shows a lack of understanding of intellectual property that only can be explained by the lack of real IP courses in their IP education. Using this reasoning, dilution should fall next – my “message” regarding Company X’s is the same as mine. So if my trade dress conveys a “message,” whatever that may be, I can prevent other trade dress that conveys the same message? That is what this uncomprehensible reasoning supports. Slippery slope really.

    Trademarks identify sources. That is it. If the identifier has some convuluted meaning behind it – does not matter – it is not the same meaning for all consumers. But as an identifier, it *is* the same meaning for all consumers, especially when their is a nice database for someone to look it up. So even though I don’t think the PTO should have a disparagement clause, the free speech clause should not prevent the PTO or Congress from creating one.

  10. I hardly find the decision incomprehensible. In fact, it was one of the most straightforward and easy to understand decisions ever written by the Court (which may not be saying much).

  11. link to scotusblog.com

    Justice Samuel Alito, in an opinion that was joined by Chief Justice John Roberts and Justice Clarence Thomas, agreed with Kennedy – to a point. Much like Kennedy, Alito acknowledged that states have an interest in protecting children from abuse; moreover, he added, “it is legitimate and entirely reasonable for States to try to stop abuse from occurring before it happens.” But, he noted, the North Carolina law under which Packingham was convicted must ultimately be deemed unconstitutional because it also bars sex offenders from gaining access to “a large number of websites” – including, but not limited to, Amazon, The Washington Post, and WebMD – “that are most unlikely to facilitate the commission of a sex crime against a child.”

    Having said that, however, Alito also disputed any suggestion that cyberspace is, as he put it, “the 21st century equivalent of public streets and parks,” which would leave states with “little ability to restrict the sites that may be visited by even the most dangerous sex offenders.” Arguing that “there are important differences between cyberspace and the physical world,” he lamented what he described as “loose rhetoric” and “undisciplined dicta” in the majority opinion.

    I wonder if Alito found that “loose rhetoric” “regrettable”?

    Seriously, though, there are major differences between cyberspace and the physical world. One of the key differences is that you can’t have non-consensual se xual intercourse with people you “meet” on the Internet. Also, on the Internet you can’t strip search an innocent 10 year old girl to see if there’s drugs hidden in her panties, even with a warrant that specifically identifies the girl. Alito should be familiar with this stuff by now.

    1. What has that case got to do with patents…?

      (It’s obvious why YOU are interested in it, but this is not that type of forum)

  12. Wither Redskins?

    The Supreme Court is often said that an unconstitutional law is no law at all. The question is, does the government have to formally undo the cancellation of the Redskins Mark, or must the Washington Redskins proactively do something?

    The answer to this question would be pertinent to the issue of IPRs if and when they are found to be unconstitutional.

    1. Whatever the fourth circuit has to say on this question will go a long way toward answering my question from the other day about what it would mean for already tanked claims if IPRs are shot down as unconstitutional.

    2. The Redskins have a pending case in the 4th Circuit that is on hold awaiting today’s decision. The Court with this case will certainly be able to resolve the issue for them. The Redskins have already taken the action they needed to protect their Mark.

    3. Ned, the “Redskins” TM issue is pending in the Fourth Circuit re six trademark registrations held by Pro-Football, Inc. (“PFI”) that include the terms REDSKINS or REDSKINETTES. Those marks were cancelled by the Trademark Office in 2014 based on the trademark statute provision that the Supreme Court just struck down. It should not take long for a decision.

      1. The fourth circuit has no breathing room to rule against the Redskins. The relevant portion of the statue used to cancel their TM is no more. Gone.

        1. Sure, but I think that Ned’s question is more interesting. Sure, there is no remaining legal basis to cancel their registration, but it stands canceled. What happens now that the basis for cancellation is itself annulled. Does the already-granted cancellation automatically unwind? Or does the team have to reapply to get its mark back?

          1. the case is active in the courts, right?

            If so, I would not think that the Redskins need to do anything other than simply ask the Judge to set the record straight (and thereby force reinstatement).

  13. The holding is simple and straightforward.

    8-0, the court holds the prohibition on registering disparaging trademarks unconstitutional.

    1. Registration is not government speech. Trademarks are private speech.
    2. The government cannot regulate the content of private speech.

    1. The holding is simple and straightforward

      And yet, look at the characterization of the headline here…

      Perhaps this:

      …a performance that may some day be considered understandable, but that, in these primitive times, so transcends what is said to be the known that it is what I mean by magic.
      Charles Fort, Wild Talents 1932

      Exchange “largely incomprehensible” for “magic” and you have the Left Liberal mindset well displayed.

  14. This is probably a small point, but does anyone else find it odd that the Court does not walk through even a perfunctory severability analysis?

    Does anyone happen to know whether the Lanham Act includes a severability clause?

    If not, are we to assume that the rest of the Act still stands, or is that an open question?

    1. Lol – so soon you forget our exchange and how I informed you of when the “defaults” of severability attach (when Congress does not discuss, THEN the default for severability attaches and explicitly, when Congress debates whether a bill should have severability or not, then the “defaults” will not attach).

    2. Greg, I do not think they address severability unless the issue comes up. I recall in the copyright case, Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998), involving the seventh amendment, the Supreme Court simply held that the statute authorizing statutory damages and requiring that they be determined by the court was unconstitutional to the extent of the requirement that they be determined by the court. Thus the defendant could demand a jury trial.

      1. I suppose that makes a certain measure of sense. Best not decide an issue that is never briefed.

        In any event, I see that the 1946 act included an express severability clause, so presumably the rest of the act is unaffected by today’s decision.

    3. No, not at all.

      The Court found the disparagement clause unconstitutional – the holding is limited to this clause.

      The decision that the Mark in question is unregistrable is vacated and the case is remanded back to the USPTO for further proceedings.

      The rest of the Act remains.

  15. Two comments:

    1) I was predicting emphatically that this case would end in reversal, both because I thought that it deserved reversal and because the Court (so I reasoned) does not take cert to the CAFC merely so as to affirm. I see that I was wrong about that (at least on the second point).

    2) On the other hand, I care more about the constitutionality of IPRs than of denial of TM registrations for “disparaging” marks. What I take from this case is that the SCotUS takes constitutional cases from the CAFC even when it does not mean to reverse. I still think that IPRs are more likely to be shot down than upheld, but the odds of affirmence do seem better today than they did yesterday. That is a happy thought.

    1. …an affirmative example of self-selected bias.

      Glomming onto “take-aways” that merely reinforce what you want to believe evidences a profound lack of critical thinking Greg.

      You won’t learn anything by doing that.

    2. Greg, I think this shows that the Supreme Court takes cases involving exceptionally important issues when there is controversy regardless of whether they intend to reverse or not.

      In MCM Portfolio LLC, and in the Cascades dissents, both Amici and judges noted the exceptional importance of the issues presented, and the substantial disagreement with the Federal Circuit position from the beginning (Patlex) on its handling the constitutional issues.

      So you might be right.

  16. This result should have surprised no one. Just because on particular form of censorship is in vogue with the DC Bureaucracy doesn’t make that constitutional. The only thing “incomprehensible” about the opinion is that it had to be written at all. Here are some key quotes that a 1L halfway through Con Law could have told you would be in the opinion in some form:

    “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”

    “Trademark registration is not the only governmentregistration scheme. For example, the Federal Government registers copyrights and patents. State governments and their subdivisions register the title to real property and security interests; they issue driver’s licenses, motor vehicle registrations, and hunting, fishing, and boating licenses or permits.”

    “the Court’s cases have long prohibited the government fromjustifying a First Amendment burden by pointing to the offensiveness of the speech to be suppressed.”

    1. “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”

      This is a total non sequitur. Who in this case was being stopped from speaking?

      I am willing to believe that the challenged Lanham Act sections were unconstitutional, but this cannot possibly be the reason for their unconstitutionality. Nothing about the Lanham Act prior to Tam stopped anyone from using (or “speaking”) any mark they might choose.

  17. “Although the court’s logic is largely incomprehensible,”

    “Poets priests and politicians
    Have words to thank for their positions
    Words that scream for your submission
    And no-one’s jamming their transmission
    ‘Cause when their eloquence escapes you
    Their logic ties you up and rapes you”
    –The Police

    1. And on a lighter note, in view of the recent events in London and the attempts to assassinate Republican congressmen, many have called the sponsors of the Shakespeare in the Part production of Julius Caesar to cease representing Julius Caesar as Trump. But the sponsors demurred, understandable, saying, “They need more practice.”

  18. DC: Although the court’s logic is largely incomprehensible

    You read my mind. Strawmen abound. I don’t blame the court. I blame the attorneys for the government who did a less than stellar job here. I’ll grant that it wasn’t the easiest case, given the broad language in the statute and the trademark at issue which was relatively close to the line.

    My favorite head scratcher in the opinion is where Alito appears to argue that expressive trademarks can’t possibly be interpreted to represent an expression of the government’s views because it would mean that the government is schizophrenic or hypocritical. Seriously. And as support for this bizarre proposition, Alito strays off the reservation and cites trademarks that aren’t remotely disparaging to any ethnic group (“Global Warming Is Good,” “Abolish Abortion” etc). Footnote 9 on page 15.

    The other more extraordinary bit that leapt out at me was this:

    Registration of the offensive marks that Tam cites is likely attributable not to the acceptance of his interpretation of the clause but to other factors—most likely the regrettable attitudes and sensibilities of the time in question.

    LOL This is the ridiculous “racism is a thing of the past” fantasy that this right-leaning Court has invoked repeatedly to open (or re-open) the doors to government-sanctioned racist policies (e.g., gerrymandering and voter suppression). New flash for Alito: (1) the “time in question” is right now — we’re living in it. And (2) trademarks are forever, provided that they’re being used.

    Also, what does Alito find “regrettable” about the “attitudes and sensibilities” of this undefined “time in question”? Why does he bother to express his subjective opinion about this “time in question” when it is utterly irrelevant to the analysis?

    Alito writes: It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause.

    So? Remind everyone, Sammy: what’s the point of trademarks? Is the purpose of the system to enable people to “own” snappy negative remarks about other groups of people? If the purpose is something different, then it seems perfectly appropriate to have a statute that eliminates the trademarks that dont’ fulfill the purpose.

    the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination.

    Is that what’s required for trademark content regulation to be Constitutional? It has to “support invidious discrimination”? Good grief.

    In any event, the floodgates are open for registering trademarks on the most appalling sentiments that any human being has ever expressed. Thank goodness we don’t live in a “regrettable time”!

  19. This is a huge HINT from the SCOTUS that TTAB constitutionality should be challenged:

    “Trademarks and their precursors have ancient origins, and trademarks were protected at common law and in equity at the time of the founding of our country.”

    Pay attention TM lawyers!

    1. This is a huge HINT from the SCOTUS that TTAB constitutionality should be challenged:

      I’m not sure why you’d focus on a throwaway line in a decision that unabashedly (if incoherently) supports a strong and expansive First Amendment. That same First Amendment is going to bite back, and it’s going to bite back hard. Wait and see.

        1. you have credibility left on this issue

          LOL — what’s “this issue”?

          Like Dennis, I think this opinion is a circular word salad that makes little sense and I have a detailed post in moderation (triggered by text in the decision that I copied) pointing out several of the problems with it.

          But, hey, if the First Amendment is strong enough to ensure that we simply must have trademarks on “Alito’s m@m@ is a —— ——- ———– who gives —– —– swine”, then it’s probably strong enough to ensure that a whole lot of other kinds of communications are protected. Like communications using a computer network, for instance. In fact, there was a case dealing with that issue today and the First Amendment was strong enough to crush a statute there, too.

          So tell everyone more about these “hints.”

          LOL

          1. Well, that didn’t take you long…

            So tell everyone more about these “hints.”

            You are already trying to get other people to supply the cogent things asked of you.

            Instead of the ad hominem, let’s see YOU make a cogent position.

            (You are not even remotely close yet)

          2. This was not “Alito’s decision” as if it was just an accidentally decided case. It was unanimously decided and included all four liberal and all four conservative justices. The reasoning is not circular at all – the only case the government had was that a TM registration was government sponsored speech. The court went to great lengths to show that this notion is absurd and, if true, would extend the reach of government so far it could start regulating any speech it wanted, including copyrighted books. Clearly, the exceptions to the first amendment are not so easy to find as to nullify it. The court quashed this dangerous precedent in its tracks.

      1. What is incoherent is your babbling about the First Amendment “bite back.”

        Maybe (just maybe) you want to do more than gurge your rants of feelings and provide some cogent view on just how that First Amendment IS going to “bite” those “other IP areas”…

        Yes, I know that actually saying something meaningful (and lacking ad hominem) for you is an extremely difficult endeavor, but please, take your time and make that effort.

    2. Trademarks are not made by or issued by the PTO like patents. They are not specifically in the Constitution and entirely Federal like patents and copyrights. The PTO merely provides a registration system for trademarks providing Federal judicial enforcement advantages [which can be revoked].

      1. Paul, inventions are not made by the government, are they? Just like trademarks, they are private rights — the grant of power in the constitution is to secure to inventors exclusive rights in their inventions.

        Thus, an inventor has a right to a patent under law upon applying with procedure. He is connstitutionally guaranteed a term with exclusive rights.

        So where does Congress get the power to revoke patents of its own authority, or to authorize the Executive to do so? That is not a power granted to them.

          1. But, Greg, it appears that the wording of the constitution, particularly “secure” was put there precisely to rebut any authority of Congress to revoke issues patents. The founder knew of the continuing assertion of such a right by the Privy Council, and want to specifically to make sure that once granted, only a court of law could revoke a patent according to the law.

            1. The purpose of “secur[ing]” is to promote “progress” of the useful arts. The only thing that IPRs are empowered to consider is whether the claims are limited to progress, or whether the claims tie up (at least in part) the prior art. As such, it is not perspicuously clear to me that there is any contradiction between the constitutional prescription to “secure” and the IPR prerogative to cancel.

              1. Greg, your exegesis virtually eliminates and gives no meaning to “secure.”

                You have to place “secure” in the context of the times considering the active intervention of the Privy Council into patent matters. The word certainly requires not only that patents have exclusive rights for limited times, but that they be “secure.” This certainly means, to me, that the point of Founding Fathers was to prevent the intervention of the government (Congress or the executive) into the validity of the patent after it has been granted.

                Certainly the cases of the Supreme Court in 1800s are consistent with this “property” aspect of patents. Not only did the Supreme Court hold that the PTO could not re-examine and cancel claims it found unpatentable (McCormick Harvesting), it further held that the government had no standing to file his suit in court cancel a patent for any reason other than fraud.

                As we know, Congress cannot grant the government standing by statute. That would be, like Marbury v. Madison, plainly unconstitutional.

                1. Greg, your exegesis virtually eliminates and gives no meaning to “secure.”

                  Hm, I disagree. It seems to me that “secure” excludes compulsory licenses (à la Ebay). “Exclude” has nothing much to say about revocations of improvidently granted patents. Remember, it is your right in the invention that is supposed to be “secure,” not your right in the patent.

                2. please pardon potential (re) post…

                  Greg, your semantics leaves no discernible point from you.
                  You are simply trying way too hard to say something way too vague.

            2. Incidentally, how does examination “secure” anything to anyone? If IPRs exceed the constitution’s warrant to “secure” the inventor’s rights in the invention, then how is examination not equally ultra vires?

        1. I don’t believe there is anything inherently unconstitutional about the IPR statute, any more than the previous re-exam statute. But as applied, the PTO is violating the letter and spirit of the statute by making it nearly impossible to amend a claim. And to add insult to injury, the PTO applies the broadest reasonable interpretation standard, which has been justified during normal prosecution mainly on the grounds that there is a process by which the PTO rejects claims using a broad interpretation and the applicant can then amend the claims. In the case of IPRs, this bargain has been violated and undermines the very purpose of the BRI standard. The SC should compel the PTO to permit amendments as a matter of right, as it did in a reexamination.

          1. But as applied, the PTO is violating the letter and spirit of the statute by making it nearly impossible to amend a claim.

            I’m not seeing this. Can you explicate?

            The SC should compel the PTO to permit amendments as a matter of right,

            But that is not how Congress wrote 35 U.S.C. 316

  20. “Although the court’s logic is largely incomprehensible,” much like the disparagement clause itself. How anyone could not view it as unconstitutionally vague is beyond me. The Court says as much in the opinion but doesn’t reach a resolution of the ultimate void-for-vagueness legal question.

  21. My favorite part: “It is thus far-fetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.”

    1. Please post that sentence on the blogs of the TM-clueless attorneys who made that “far fetched” argument in their amicus briefs in this case.

      1. Add the following good slam from the decision:
        “For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony),10 “Think different” (Apple),11 “Just do it” (Nike),12 or “Have it your way” (Burger King)13? Was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”14? “

  22. Although the court’s logic is largely incomprehensible

    LOL

    The “logic” of 101 gets a free pass from the editors of the blog, but the rather straight forward (but oh-so-politically-incorrect) non-control of speech gets a “incomprehensible” tag.

    Tis a strange albeit fitting reflection of the general editorial controls (and the pursuit of such “norms” of the Liberal Left).

    1. Well, anon, you should take a victory lap. You have been saying this for years.

      Imagine the marks that are being filed right now…

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