When All You Have is a Hammer, Everything Looks Like a Nail In re Tam and the Federal Circuit's Conflation of Federal Trademark Registration and the First Amendment

When All You Have is a Hammer, Everything Looks Like a Nail
In re Tam and the Federal Circuit's Conflation of Federal Trademark Registration and the First Amendment

Drew Jurgensen

In December 2015, the United States Court of Appeals for the Federal Circuit (Federal Circuit) issued an en banc decision in the In Re Tam case. The decision of the Federal Circuit reversed settled case law that has stood for the past seventy years. The court held that the “disparaging provision” of the Lanham Act is unconstitutional on its face because it fails the strictest form of judicial scrutiny in violating the First Amendment rights of a trademark owner without offering a narrowly tailored regulation that directly advances a compelling government interest. The disparaging provision, which allows the United States Patent and Trademark Office (USPTO) to deny federal trademark registration to marks that “disparage . . . or bring [a substantial composite of a referenced group] into contempt, or disrepute,” has now been effectively removed from the USPTO’s toolkit by way of the federal circuit court that has direct appellate review power over the Office.

This is a big deal in both the trademark and First Amendment worlds. While the Fourth Circuit will soon rule on the constitutionality of the exact same provision in the very newsworthy Blackhorse case featuring the trademarked logo of the Washington Redskins, the Federal Circuit’s ruling in Tam raises some serious concerns about the USPTO’s ability to police national trademarks, a power grounded in the Commerce Clause and primarily used to protect consumers. The ruling also adds substantially to First Amendment jurisprudence, with its commercial speech holding raising particular concerns over whether it could end up broadening an already over-broad protection for commercial speech. While it remains clear that recent First Amendment holdings protect more and more commercial speech, it is unclear whether the amendment was ever meant to protect commercial speech at all.

In terms of trademark law, the Tam court was asked to specifically consider the process by which the USPTO registers federal trademarks. Federal trademark registration provides purely commercial benefits to trademark holders, and a denial of federal registration certainly does not prevent trademark holders from using their marks. Before Tam, this was the primary justification for the disparagement provision—and every other provision that allows the USPTO to deny trademark registration. But since Tam, the issue requires an in-depth exploration to save the disparaging provision, and potentially other Lanham Act provisions, from destruction.

Trademarks themselves consist of commercial, and sometimes expressive, speech, but the motivations to federally register trademarks remain entirely commercial. Further, when the government grants registration—and blesses those registered marks with the mythical ® symbol—it approves the final “message” of the mark, if one exists. Federally registered marks therefore represent government speech to some extent. However, neither the commercial speech nor government speech doctrine neatly applies to federal trademark registration. Further, federal trademark registration does not represent a benefit such that the unconstitutional benefits doctrine would apply. The Federal Circuit in Tam made legal holdings on all three of these areas of First Amendment law. The holdings were unnecessary and further complicate an already tangled web of First Amendment case law.

The key to all of this is the fact that the denial of federal trademark protection does not stop the owner of the mark from using it; so a denial of federal trademark protection does not restrict speech. In Tam, the Federal Circuit made several precedential holdings that it did not need to make. Provisions of the Lanham Act that allow the USPTO to deny federal trademark registration do not implicate the First Amendment, and when the Supreme Court hears this case, which it will, it should hold just that. It should use the Tam decision as a vehicle to push back on the expanding protection of commercial speech and the growing trend to use the First Amendment as a shield against government action.

Part I of this Comment discusses both First Amendment and trademark law, focusing on the historically weaker protection for commercial speech, and the relatively minor—but wholly commercial—benefits that federal trademark registration grants to registrants. Part II breaks down the majority and the dissenting opinions of the Tam case. Part III argues that the Federal Circuit erred in the Tam case, and that history, precedent, and common sense point toward a strict separation of federal trademark registration and the First Amendment.

98 J. Pat. & Trademark Off. Soc’y 512(2016)

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