The Scandalous Trademark

September 12, 2017

The First Amendment’s Free Speech Clause limits government control of private speech but does not limit government speech. Where courts draw the line as to whether a government issued document is private speech or government speech is not very clear. The decision on whether a government-issued document is government speech or private speech becomes even more difficult when there are policy considerations that weigh in favor of private speech. However, if such a government-issued document is found to be free speech, then this could invite speech found to be indecent by some, and could reflect negatively on our society and our government. The U.S. Supreme Court has been able to balance these two opposing viewpoints in two recent cases.

In Matal v. Tam, decided June 19, 2017, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s (CAFC) decision, holding that the First Amendment’s protection of free speech supported the registration of the trademark “The Slants.” The Court reasoned that trademarks are protected under the First Amendment’s Free Speech Clause because trademarks are private, not government speech. Previously, the United States Patent and Trademark Office (USPTO) denied a trademark application because “The Slants” was found to be a disparaging mark under the Lanham Act provision, 15 U.S.C § 1052.

The private speech label the U.S. Supreme Court in Tam gave to government-issued trademarks, however, does not extend to state government-issued vehicle license plates. Currently, states do not issue specialty license plates if they violate state statutes promoting decency. The California DMV website states that “the department shall refuse any configuration that may carry connotations offensive to good taste and decency, or which would be misleading, based on criteria such as configurations that have a sexual or negative connotation, is a swear word, or a vulgar term.” According to a report May 22, 2017 in the Sacramento Bee, by Walter Ko, the California Department of Motor Vehicles (DMV) has denied requests for specialty license plates with the spelling “OSX4EVA” from an applicant who was a fan of Apple’s OS X operating system. Also, the DMV denied an applicant’s request for “DWARVES,” coming from an applicant who wanted to honor his aunt, D. Warves.

The U.S. Supreme Court has held state regulations, such as those that the California DMV enforces, do not violate the First Amendment’s Free Speech Clause. In Walker v. Texas Div., Sons of Confederate Veterans, Inc., a non-profit group applied to the state of Texas to sponsor a specialty license plate with a Confederate flag logo. The Court found that even though the applicant took “part in the design and propagation of a message” that this did “not extinguish the governmental nature” of the speech. Thus, the Court held that specialty license plates are government speech, and were not afforded the protections provided to private speech.

It is surprising that the U.S. Supreme Court would find that two different government-issued documents, an applicant’s “design” on a specialty license plate and a “design” of a trademark, would be two different forms of speech. Furthermore, the application for a license plate and the trademark could possibly be the same creative spelling of the “message” that the “Federal Government does not dream up.” The U.S. Supreme Court may soon have to address these two competing decisions in Tam and Texas Division, because the Court did not address in Tam whether trademarks consisting of immoral or scandalous matter, both prohibited by the Lanham Act, are government or private speech.

The CAFC is currently considering such an issue on appeal from a decision in In Re Brunetti. In In Re Brunetti, the applicant Erik Brunetti is appealing a decision by the Trademark Trial and Appeal Board (TTAB) that found the applicant’s trademark application to be in violation of the immoral and scandalous provision of the Lanham Act. The applicant was seeking to trademark, “FUCT,” an acronym that had a similar phonetic pronunciation to that of a vulgar term. The TTAB did not discuss whether the Free Speech Clause would apply. However, given that the CAFC narrowed the scope of the disparagement clause in Tam, it is likely that the CAFC will continue down the same path. Should the U.S. Supreme Court later grant certiorari after a CAFC ruling, it is plausible that the U.S. Supreme Court would take a similar applicant friendly approach toward the approval of such trademarks as Justice Alito noted in Tam, that the “Federal Government does not dream up the trademarks.” This is a profound announcement to the USPTO that the U.S. Supreme Court is likely to consider any trademark to be a form of private and not government speech. A decision that would continue to strengthen the rights of trademark applicants guaranteed by the First Amendment.