2. Introduction
Trademarks and trademark protection by their very nature deal with commerce. Owners
create these marks as an expressive or descriptive way to identify their goods or services. In that
sense, it is no surprise that many companies—like the Redskins —and individuals—Simon1
Tam —take pride in their marks and choose to fight the Lanham Act's disparaging provision2
since it has the ability to cancel their marks if the mark is deemed to be “disparaging”.
The most influential act for modern trademark protection is the Lanham Act passed in
1946. The Lanham Act established the modern law for trademark protection and it is from that
act that most states have adopted their own trademark statutes extending state law protection. It3
is § 2(a)—the disparaging provision—of the Lanham Act that is what will be discussed in this
article.
It is because of this statute that a number of lawsuits have been brought across the
country. The main focus in this article is going to be the Federal Circuit’s In Re Tam (Tam)4
decision and how the court came to their determinations and if their decisions were correct. This
article concludes that § 2(a) of the Lanham Act should be invalidated as being unconstitutional
and that “The Slants” trademark should be validated as decided in Tam. It is worthwhile to note
that just because this article argues that the Lanham Act § 2(a) is unconstitutional does not mean
there is an endorsement of disparaging marks.
See Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015).1
See In Re Tam, 808 F.3d 1321 (Fed. Cir. 2015).2
See, e.g., S.C. Code Ann. § 39-15-1115 (2015).3
See, e.g., Pro-Football, 112 F.Supp. 3d 429; Tam, 808 F.3d 1321.4
!2
3. Part I will begin by taking a look at something the Federal Circuit did not expressly touch
on. Throughout their opinion they note the financial burdens that would affect businesses and
individuals if their marks were cancelled or disallowed. This would appear to raise an
abridgment of speech issue, which is expressly disallowed by the First Amendment. Next, Part II
will look at the difference between content-based and viewpoint-based discrimination and why
the distinction between the two is so important. Then, this article will analyze the decision of the
Federal Circuit and determine if they correctly decided which “level” of discrimination was
applicable here. This, in turn, would impact whether this act would be subject to strict scrutiny
or if it would be held to be unconstitutional without further need for analysis. Thereafter, Part III
acknowledges that if a court were to decide that the Lanham Act's disparaging provision is
content-based discriminatory, then strict scrutiny should be applied. However, this article asserts
that the Lanham Act's disparaging provision would not pass even under the Central Hudson test
with intermediate scrutiny, so a strict scrutiny analysis would be necessary. If a court decided
that the § 2(a) is just content-based discriminatory and requires strict scrutiny, the government
would then argue that the Lanham Act's disparaging provision should be able to avoid strict
scrutiny by raising possible exceptions. Foremost, part IV analyzes whether the Lanham Act is a
government subsidy, which would pull the analysis out of strict scrutiny and could validate the
actions of the government if those actions are taken in furtherance of the subsidy. Here, this
article will focus primarily on whether the subsidy doctrine should even apply in the first place.
Another exception the government argues, which is discussed in part V, is whether trademarks
are government speech. This would have the effect of pulling the analysis of constitutionality
out of strict scrutiny. Furthermore, this article will look to potential policy issues that could arise
!3
4. if the court were to find that trademarks are government speech. Finally, in part VI, the issue of
vagueness that was brought up in Judge O’Malley concurrence will be touched on. Analyzing
whether the Lanham Act should be held to be unconstitutional because it is overly vague and
therefore cannot give sufficient notice to the reasonable person what the statute requires.
I. ABRIDGMENT OF SPEECH
A. Lanham Act § 2(a) abridges right to free speech
Although not specifically addressed by the Federal Circuit, this article asserts that the
government effectively abridges the right to free speech when they cancel marks under the
Lanham Act's disparaging provision. In Smith v. California, the Supreme Court said the Federal
Government cannot abridge free speech, even in the slightest. “ . . . [The Smith court does] not5
believe that any federal agencies, including Congress and this Court, have power or authority to
subordinate speech and press to what they think are ‘more important interests.’” Additionally,6
in Simon & Schuster, Inc. v. Members of the N.Y. State Crime Victims Bd. (Simon), the court said,
“A statute is presumptively inconsistent with the First Amendment if it imposes a financial
burden on speakers because of the content of their speech.” Thereby, denying trademark7
protection to certain speech, albeit not disallowing you from physically speaking it, would create
Smith v. Cal., 361 U.S. 147, 157 (1959).5
Id at 157-58.6
Simon & Schuster, Inc. v. Members of the NY State Crime Victims Bd., 502 U.S. 105, 1157
(1991).
!4
5. a financial burden on those who wish to have trademark protection on something deemed to be
disparaging. Unlawful abridgment requires that the statute survive strict scrutiny.8 9
The Lanham Act's disparaging provision would be an abridgment to one’s speech. This is
because of the financial burden that would be placed on the potential mark holder, which has
been determined to be an unlawful abridgment. The government is able to unilaterally cancel a10
trademark or deny trademark protection to anything it decides is “disparaging” and that power to
take away protection for these marks could cost companies millions of dollars and would likely
drive away certain speech from the marketplace. For example, take the current case before the
Fourth Circuit, Pro-Football, Inc. v. Blackhorse. If the Fourth Circuit ultimately affirms the11
District Court in its decision that “Redskins” is disparaging, then it would no longer have
trademark protection and would create a substantial financial burden on the company. Not only
could the company not enforce their rights to “Redskins”, they would have to go through a re-
branding effort to change their name, logos, etc., so they could create a new mark that would
have trademark protection. In addition to the financial burden, they would likely not use the
“Redskins” mark anymore. This would abridge the type of speech the Redskins owner wants to
use to identify his goods and services, which would effectively be the government driving the
expression from the marketplace.
Id.8
Id at 118.9
See Simon & Schuster, Inc. v. Members of the NY State Crime Victims Bd., 502 U.S. 10510
(1991); Sorrell v. IMF Health Inc., 564 U.S. 552 (2011).
See generally Pro-Football, Inc., 112 F. Supp. 3d 439.11
!5
6. Therefore, the disparaging provision is an unconstitutional abridgment to free speech and
would need to survive strict scrutiny, which is analyzed in Part III, below.
II. VIEWPOINT V. CONTENT-BASED DISCRIMINATION
One of the first issues raised in Tam was the issue in deciding whether the Lanham Act's
disparaging provision is viewpoint or content-based discriminatory. If something is content-12
based discriminatory, then it must survive strict scrutiny to be constitutional. In addition to13
something being found to be content discriminatory, it could also rise to the level of viewpoint
discrimination. If something rises to the level of viewpoint discrimination—where the
government is suppressing ideas and views and not just content or topics—then it is held to be
unconstitutional, no matter if it can pass strict scrutiny. However, as argued by the government14
in Tam, there are certain exception that could apply such as subsidy, government speech, etc.
This would, in effect, pull the analysis out of strict scrutiny.
This article argues that the Federal Circuit correctly determined the Lanham Act § 2(a) is
content-based and viewpoint discriminatory. This article will first go into the issue of content-
based discrimination and then will address viewpoint discrimination before moving into possible
exceptions.
See Tam, 808 F.3d at 1334-39.12
See Pleasant Grove City v. Summun, 555 U.S. 460, 461 (2009).13
See Sons of Confederate Veterans v. Vehicles, supra Note 11, 288 F.3d 610, 623 (4th Cir. 2002)14
(stating how the government is presumptively unable to discriminate on the basis of viewpoints)
!6
7. A. Court correctly decided the § 2(a) is content-based discriminatory
In Reed v. Town of Gilbert, the court said that, “Government regulation of speech is
content based if a law applies to particular speech because of the topic discussed or the idea or
message expressed.” The Court further determined that, “This commonsense meaning of the15
phrase ‘content based’ requires a court to consider whether a regulation of speech ‘on its face’
draws distinctions based on the message a speaker conveys.” For that reason, content-based16
discrimination is presumptively invalid and if something is found to be discriminating on the17
basis of content, it must survive strict scrutiny.18
Here, the Lanham Act's disparaging provision is content-based discriminatory because it
singles out and denies trademarks under the “disparaging” topic. Essentially, when the
government is cancelling marks the Patent and Trademark Office deems to be “disparaging”,
they are limiting certain kinds of speech and potentially the topics of conversations people want
to have. For instances, take the current case, Simon Tam wants to name his band “The Slants” in
order to celebrate asian heritage and traditions. Tam chose that mark because he wants to incite19
conversation; however, since the PTO has deemed it to be “disparaging”, they have denied
trademark protection. This causes a halt in conversation solely because your mark is found to fit
in the “disparaging” topic.
Reed v. Town of Gilbert, 135 S. Ct. 2218, 2227 (2015).15
Reed, 135 S. Ct. at 2227 (citing Sorrell, supra, at ____, 131 S. Ct. 2653, 2663, 180 L. Ed. 2d16
544-55).
Id.17
See Pleasant Grove City, 555 U.S. at 469.18
Tam, 808 F.3d at 1373.19
!7
8. A counterargument that could be raised is, if the disparaging provision in trademark law
is content-based discriminatory, then what about the very purpose of trademark. For instance, in
granting trademark protection, you have to have a mark that is distinctive enough not to be
classified as generic to obtain protection. Or you have to have a mark that is well-known enough
to obtain secondary meaning. To respond to this point, there is a crucial distinction between20
moral judgment versus determining what is inherently distinctive or when something has gained
secondary meaning. For instance, if we were to take the “Apple” mark, we know that Apple
deals with computer hardware, software, accessories, phones, etc. This would be inherently
distinctive from the fruit apple and therefore would be distinctive in identifying the types of
goods they are selling. In order for anyone, including the board of examiners at the PTO to make
this determination, it does not require any personal beliefs or subjectivity to enter into their
thought processes. They are able to look at the mark, look at the product being sold and
determine whether it is inherently distinctive or acquired secondary meaning to gain trademark
protection. However, when the board of examiners seek to apply the Lanham Act § 2(a), they
are inherently looking to what they believe to fit in the “disparaging” category. Take, for
example, the current case about “The Slants”. The PTO has determined this to be disparaging to
Asian-Americans and have therefore denied protection to this mark given the examiners’
upbringings and beliefs; however, to me, being one from asian decent, it does not appear to be
disparaging. This type of subjectivity that is involved in making these determinations are critical
See Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (holding that “Aspirin” cannot20
have trademark protection because it has become generic in the United States); Nissen
Trampoline Co. v. Am. Trampoline Co., 193 F. Supp. 745, 750 (S.D. Iowa 1961) (holding that
“Trampoline” has become generic and does not have trademark protection).
!8
9. in drawing a distinction between generally granting a trademark and denying a trademark
because it is disparaging.
Therefore, the Lanham Act's disparaging provision is, at a minimum, content-based
discriminatory.
B. Section 2(a) of Lanham Act is also viewpoint discriminatory
In addition to just a content-based ban, the Lanham Act's disparaging provision rises to
the level of viewpoint discrimination. Viewpoint discrimination occurs when the government is
not only banning certain content or topics, but certain ideas. The test for viewpoint21
discrimination is “[o]ther things being equal, viewpoint discrimination occurs when government
allows one message while prohibiting the messages of those who can reasonably be expected to
respond.” Additionally, viewpoint discrimination involves intent to discourage one viewpoint22
and advance another. The general concern being that the government will try to eradicate, not23
just content from the marketplace, but certain viewpoints—whether positive or negative. If24
something rises to the level of viewpoint-based discrimination, it is deemed to be
unconstitutional.25
Simon & Schuster, Inc., 502 U.S. at 116.21
Rosenberger v. Rector & Visitors of the Univ. of Va., 515 U.S. 819, 894 (1995).22
United States v. Kokinda, 497 U.S. 720, 736 (1990) (citing Monterey County Democratic Cent.23
Comm. v. United States Postal Serv., 812 F.2d 1194, 1198-1199 (9th Cir. 1987).
Tam, 808 F.3d at 1334-35 (2015).24
Sons of Confederate Veterans, supra Note 11, 288 F.3d at 623.25
!9
10. The Federal Circuit came to the determination that the Lanham Act's disparaging
provision is not only content-based discriminatory, but viewpoint discriminatory. In coming to26
their determination, the Federal Circuit looks to which marks were granted trademark protection
and which marks were denied trademark protection to see if there were certain viewpoints that
are consistently being denied protection. For example, take “The Slants”, which has been27
determined to be disparaging and inherently negative towards Asians. The Federal Circuit28
observed that there were other marks that are directed towards Asians, which have been granted
protection. These marks being “Celebrasians” and “Asian Efficiency”. From here the Court29 30
observed that, “ . . . the government registers marks that refer to particular ethnic groups or
religions in positive or neutral ways—for example, NAACP, THINK ISLAM, NEW MUSLIM
COOL, MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B CATHOLIC.” In granting31
these trademarks, the government has denied, “Stop the Islamisation of America”, “Khoran for
wine”, “HEEB”, “Redskins”, “Squaw Valley”, etc. The Federal Circuit held that, “the32
government enacted § 2(a), and defends it today, because it is hostile to the message conveyed by
Tam, 808 F.3d at 1337.26
Id at 1336.27
See generally Tam.28
Tam, 808 F.3d at 1336.29
Id.30
Id at 1337.31
Id at 1336-37.32
!10
11. the refused mark. Section 2(a) is a viewpoint-discriminatory regulation of speech, created and
applied in order to stifle the use of disfavored messages.”33
In addition to agreeing with the Federal Circuit about the Lanham Act § 2(a) being
content-based discrimination, it would rise to the level of viewpoint discrimination as well.
Given the Federal Circuit’s approach by looking to which marks the PTO had and had not
granted trademark protection to, it would seem as though the marks the PTO denied protection to
had more of a negative viewpoint and the ones granted protection had more of a positive spin.
Take, for example, the government granting trademark protection to the mark “Think Islam”,
while denying trademark protection to “Stop the Islamization of America”. The mark “Think
Islam” seems to be a more positive mark used to promote Islam in a more “peaceful” fashion;
whereas, “Stop the Islamization of America” appears to be more aggressive, harsher and
negative. Same can be said for the current case, the PTO determined the mark “The Slants” was
more negative and could be seen as condescending upon a substantial composite of Asians.
However, the PTO granted trademark protection to “Celebrasians” and “Asian Efficiency”,
which would seem to be more positive as “Celebrasians” seems to be a spin on celebration and
“Asian Efficiency” just appears to be a positive mark towards Asians, because efficiency is
typically associated as a good thing.
A likely counter argument to viewpoint discrimination is that there was no intent by
Congress when they passed the Lanham Act's disparaging provision to discriminate on the basis
of viewpoints. Additionally, Congress itself is not making any judgment as to what disparaging
is when the act was passed, it is up for interpretation by the PTO. A case the government may
Id at 1337.33
!11
12. cite to bolster their point would be Monterey County Democratic Central Committee v. United
States Postal Service (Monterey). In Monterey, the United States Postal Service promulgated a
regulation allowing voter registration drives on postal grounds; however, groups assisting with
voter registration could not be a partisan group. The Court determined that, “Nothing suggests34
the Postal Service intended to discourage one viewpoint and advance another.” From that35
language, they found the regulation was not viewpoint discriminatory.
One distinction that could be asserted from the Monterey case is that the regulation in
Monterey was not viewpoint discriminatory in the first place. The regulation was designed to
disallow a certain category of groups from assisting in voter registration and that should have
been classified as content-based discrimination. The USPS never aimed specifically against a
certain view as in republican, democrat, environmental groups, etc. Additionally, when you give
an agency—PTO in this case—so much discretion in choosing which marks they want to grant
trademark protection to, it will inherently be viewpoint discriminatory when you base it off of
such an ambiguous term like “disparaging”, because everyone has different beliefs in what
should be classified as disparaging. What is classified as “disparaging” to the board of
examiners will be influenced by their own, personal viewpoints.
Furthermore, from a policy perspective, if the government were to raise an argument of
“intent”, the argument should be thrown out because the government could have limitless power
to raise this argument in the future. It would set bad precedent for future cases. Arguably, the
Monterey court made a mistake by focusing so much on intent and they should have focused,
Monterey County Democratic Cent. Comm. v. United States Postal Serv., 812 F.2d 1194, 119534
(9th Cir. 1987).
Id at 1198-99.35
!12
13. which they ultimately decided, that the regulation was just not viewpoint discriminatory.36
Finally, it is worthwhile to note that Monterey is not a Supreme Court case and would not have to
be followed or even entertained by the Supreme Court, should they grant certiorari.
Therefore, the Lanham Act's disparaging provision does discriminate based on
viewpoints; however, like the Federal Circuit in Tam, this article will continue as if this rose
only to the level of content-based discrimination.
III. THE LEVEL OF SCRUTINY
This article argues that the majority in Tam came to the correct conclusion when the
Federal Circuit determined that the Lanham Act's disparaging provision does not pass strict
scrutiny. According to Nat’l Assoc. of Mfrs. v. Taylor:37
“[t]o satisfy strict scrutiny, the government must establish three elements: (1) "the
interests the government proffers in support" of the statute must be "properly
characterized as 'compelling'"; (2) the statute must "effectively advance [] those
interests"; and (3) the statute must be "narrowly tailored to advance the
compelling interests asserted."38
If the Lanham Act's disparaging provision fails any one of these three prongs then the act will be
deemed unconstitutional, unless one of the exceptions to strict scrutiny are applied. The subsidy,
government speech and the Central Hudson exceptions are addressed later.
See generally Monterey County Democratic Cent. Comm., 812 F.2d 1194.36
Tam, 808 F.3d at 1334.37
Nat’l Assoc. of Mfrs. v. Taylor, 582 F.3d 1, 11 (D.C. Cir. 2009) (citing Blount v. SEC, 61 F.3d38
938, 943, 314 U.S. App. D.C. 52 (D.C. Cir. 1995).
!13
14. A. Strict scrutiny applies and the disparaging provision fails
i. Government tries to evade strict scrutiny
The government puts forth a number of arguments bypass the strict scrutiny requirement;
the first one being, “that § 2(a) [of the Lanham Act] does not implicate the First Amendment
because it does not prohibit any speech.” To bolster their argument, the government uses the39
McGinley case, which stated that, “‘it is clear that the PTO’s refusal to register appellant’s mark
does not affect [their] right to use it. No conduct is proscribed, and no tangible form of
expression is suppressed.’”40
The Federal Circuit disagreed with this contention. The Court decided that, “‘ . . . if the
government could deny a benefit to a person because of his constitutionally protected speech or
associations, his exercise of those freedoms would in effect [be] penalized and inhibited. . . .”41
Additionally, the Federal Circuit also determined that “the [government had] ‘ . . . burdened a
form of protected expression,’ while leaving ‘unburdened those speakers whose messages are in
accord with [the government’s] own views.’”42
The court came to the correct determination that the burden to the mark holder's speech
is enough to activate the first amendment. As discussed at length in Part I of this article, every
time the PTO denies a trademark they find “disparaging”, they are financially burdening the
mark holder from using the mark they choose. This burdens the speech/marks individuals want
Tam, 808 F.3d at 1339.39
Id at 1340-41 (citing In Re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981)).40
Tam, 808 F.3d at 1340 (citing Perry v. Sindermann, 408 U.S. 593, 597, 92 S.Ct. 2694, 33 L.Ed.41
2d 570 (1972)).
Tam, 808 F.3d at 1340 (citing Sorrell v. IMS Health, Inc., 131 S. Ct. 2653, 2672 (2011)).42
!14
15. to use because without trademark protection, the mark holder cannot enforce their property
rights. The lack of trademark protection hampers the type of speech mark holders will use. Take
the current case, “The Slants” would have to change the name they want to use if they wanted to
make money off of their brand because the government would not afford them protections under
trademark law. Under Sorrell v. IMS Health Inc., “ . . . the ‘distinction between laws burdening
and laws banning speech is but a matter of degree’ and that the ‘Government's content-based
burdens must satisfy the same rigorous scrutiny as its content-based bans.’ Even though the43
Lanham Act's disparaging provision does not ban certain speech, it should be analyzed under
strict scrutiny.
The government’s counterargument is that Mr. Tam still has his common law remedies to
protect his rights and trademark. However, the Federal Circuit responds that for you to have44
common law protections, you would have to have a mark that is “‘ . . . entitled to registration
under [the Model State Trademark] Act whether registered or not.’ . . . Common law rights to a
mark may thus be limited to marks “entitled to marks ‘entitled to registration.’ With regards to45
this argument, the Federal Circuit noted that the “ . . . government has not pointed to a single
case where the common-law holder of a disparaging mark was able to enforce the mark, nor
could we find one.”46
Sorrell, 131 S. Ct. at 2664 (citing United States v. Playboy Entertainment Group, Inc., 52943
U.S. 803, 812, 120 S. Ct. 1878, 146 L. Ed. 2d 865 (2000)).
Tam, 808 F.3d at 1344.44
Id (emphasis added).45
Id.46
!15
16. As asserted by the Federal Circuit, the common-law remedies are illusory for any mark
found to be disparaging. If the policy of the government in passing this act were to prevent those
marks from being used in commerce, then why provide a common-law remedy to these marks?
The answer is simple, the government has no intention of providing common law remedies to
“disparaging” marks. If the government were to provide these remedies, it would undo the very
purpose of the disparaging provision. Therefore, strict scrutiny should still be applied in
analyzing the constitutionality of this statute.
ii. Disparaging provision would fail under Central Hudson test and therefore fails here
As argued below in Part III.B., the disparaging provision would not pass the Central
Hudson test for intermediate scrutiny and therefore it would not pass under strict scrutiny.47
B. Still unconstitutional under Central Hudson
If the Central Hudson test were to be applied, which uses intermediate scrutiny, then the
disparaging provision should still fail. For Central Hudson to apply, the court would have to
determine that the statute at issue deals with commercial speech. From Central Hudson, the48
Supreme Court developed a four-part test to determine whether a statute should pass muster.49
The test looks to see: (1) If the expression is protected by the first amendment—for it to fall here,
it must concern lawful activity and not be misleading; (2) is the asserted governmental interest
substantial; (3) does the regulation directly advance the governmental interest asserted; and (4) is
See supra Part III.B.47
See generally Cent. Hudson Gas & Elec. Corp. v. Public Serv. Comm’n, 447 U.S. 557 (1980).48
Id.49
!16
17. the regulation more extensive than is necessary to serve that interest—there must be a
“reasonable fit” between the government’s ends and the means of achieving those ends.50
i. This would be protected by first amendment
This article asserts that the Lanham Act’s disparaging provision deals with speech that is
protected by the first amendment. The disparaging provision cancels marks it deems
“disparaging”, but just because these marks are “disparaging”, does not mean they are
misleading. The very purpose of trademark law is to be a source identifier. It would be absurd
for a company to intentionally create a misleading mark, if they had a good-faith attempt to
register it. Therefore, the disparaging provision would likely pass this first prong.
ii. Governmental interest is substantial here
This article argues that the Federal Circuit did not come to the correct determination here.
The government does have a substantial interest in preventing disparaging marks from gaining
trademark protection; however, as discussed below, the Lanham Act's disparaging provision is
not narrowly tailored enough and should still fail under intermediate scrutiny.
The government puts forth three arguments asserting that they have a substantial interest
in regulating disparaging marks. The first argument the government puts forward is that “ . . .51
the United States is ‘entitled to dissociate itself from speech it finds odious.’” This is not an52
adequate argument because the constitution requires the government to get involved with speech
it finds odious from time to time. For example, take assemblies that the government “sponsors”
Id.50
Tam, 808 F.3d, at 1356-57.51
Id at 1356.52
!17
18. with groups like Westboro Baptist Church. Given the way our constitution is written and the
way our government is set up, the government cannot completely disassociate itself from speech
it finds odious. Our government and system thrives off of the exchange of information and
philosophies that may not be identical to their own and even though most of the country is
fervently against the messages and ideologies Westboro Baptist Church espouses, the
government protects them and grants them their right to assemble under the First Amendment.
Same analysis can be applied for disparaging marks, just because the government may not like
the speech, does not give it a compelling enough interest to not protect it.
The next argument raised by the government is that “ . . . it has a legitimate interest in
‘allowing States to make their own determinations about whether trademarks should be
unenforceable on grounds of public policy.’” This is not a valid substantial interest either53
because this is not an issue where a state denied trademark protection. This is an issue where the
Patent and Trademark Office—Federal entity—decided that the mark was disparaging and
denied trademark protection. This appears to be an attempt by the Federal government to bring
in federalism concerns to try and pressure the courts to not get involved. This article, along with
the Federal Circuit, agree that this is not a substantial enough interest to satisfy this prong of the
Central Hudson test.54
The government also asserts that, “ . . . it has a legitimate interest in ‘declining to expend
its resources to facilitate the use of racial slurs as source identifiers in interstate commerce.’”55
Id at 1357.53
Id.54
Id at 1356.55
!18
19. Here, although this is a compelling argument, it would not amount to a substantial interest,
because, no taxpayer dollars are being spent in registering the actual marks. As discussed56
further in part IV—the subsidy argument—registrants pay an administrative fee when they file
for a trademark and that administration fee is what is used to fund the actual process of
registering marks. Just because the government spent money to set up the Patent and Trademark
Office itself, would not give it a substantial interest in everything it does. From a policy
perspective, the government could assert a substantial interest in anything because one way or
another federal funds are touching it. This is analogous to the commerce clause and how it
started off as a narrow clause, but over the course of decades of jurisprudence, it has been
expanded and is quite exhaustive in what it covers. This should not be allowed to proceed
because if it were, it would render this prong of intermediate scrutiny and possibly even strict
scrutiny useless, because the government could always assert a substantial or compelling interest.
Finally, in his dissent, Judge Reyna mentions another substantial interest that should be
considered. Reyna stated that, “[t]he government has a substantial interest in regulating
‘deceptive or misleading’ commercial speech, even if that speech is not wholly false, because of
the government’s substantial interest in ‘insuring that the stream of commercial information flow
cleanly as well as freely.’” He added that, “ . . . any speech that substantially undermines the57
orderly flow of commerce may potentially be subject to at least some regulation.” In order to58
Id.56
Tam, 808 F.3d at 1379 (citing Virginia State Bd. Of Pharmacy, 425 U.S. at 771, 96 S.Ct. 181757
(1976) (emphasis added)).
Tam, 808 F.3d at 1379.58
!19
20. support his claim, he mentions how discrimination was used in establishments. One restaurant59
he uses to bolster is point is “Spics Not Welcome”, and stated that, “Whether a restaurant named
‘SPICS NOT WELCOME’ would actually serve a Hispanic patron is hardly the point. The mere
use of the demeaning mark in commerce communicates a discriminatory intent as harmful as the
fruit produced by the discriminatory conduct.”60
Here, this would rise to a substantial government interest. The reason for this is because
of the example used by Judge Reyna. For example, if I—as an Asian-American—was driving
around a town and saw a restaurant with the name “Asians Not Welcome,” that would be
offensive and upsetting. It would be a disgust that I would direct not only towards the business
but likely to the community that allowed the business to exist. This could have an amplified
effect across all Asian-Americans and could potential cause an issue for orderly commerce.
Especially if these types of businesses were allowed to flood markets across the country.
Therefore, on Reyna’s mentioned interest alone, the government would have a substantial
interest in passing the Lanham Act's disparaging provision and would pass this prong of the
Central Hudson test.
iii. Directly advance is closely tied with fourth prong
According to Lorillard Tobacco Co. v. Reilly (Lorillard), to directly advance the
government’s interest requires:
“This burden is not satisfied by mere speculation or conjecture; rather, a
governmental body seeking to sustain a restriction on commercial speech must
Id at 1380.59
Id.60
!20
21. demonstrate that the harms it recites are real and that its restriction will in fact
alleviate them to a material degree.”61
However, even though the Lorillard court provided a test for “directly advance”, they concede
that the last step from Central Hudson compliments this step about direct advancement and
therefore are better when analyzed together.62
iv. Disparaging provision is not narrowly tailored enough
The Federal Circuit did not decide whether the Lanham Act's disparaging provision was
narrowly tailored, because they held the government did not have a substantial interest in the
disparaging provision and ended their analysis at that point. This article argues that the63
Lanham Act's disparaging provision is not narrowly tailored enough to pass intermediate
scrutiny. In Lorillard, the court determined that narrowly tailored for intermediate scrutiny
should be established by, “ . . . a reasonable fit between the legislature's ends and the means
chosen to accomplish those ends . . .”.64
In Lorillard, the Massachusetts Attorney General Scott Harshbarger “announced that as
one of his last acts in office, he would create consumer protection regulations to restrict
advertising and sales practices for tobacco products.” Harshbarger reasoned that he wanted to65
Lorillard Tobacco Co. v. Reilly, 533 U.S. 525, 555 (2001) (citing Greater New Orleans Broad.61
Ass’n v. United States, 527 U.S. 173, 188 (1999) (quoting Edenfield v. Fane, 507 U.S. 761,
770-71 (1993))).
Lorillard Tobacco Co., 533 U.S. at 556.62
See generally Tam, 808 F.3d 1321 (2015).63
See Lorillard Tobacco Co., 533 U.S. 525, 556.64
Id at 533.65
!21
22. do this to protect children from tobacco products. This regulation, prohibited advertising66
cigarettes in outdoor advertising, including enclosed stadiums and within 1,000 feet of
playgrounds or schools. The Supreme Court found that, “The broad sweep of the regulations67
indicates that the Attorney General did not ‘carefully calculate the costs . . . associated with the
burden on speech imposed’ by the regulations.” Moreover, that, “The record indicates that the68
regulations prohibit advertising in a substantial portion of Massachusetts' major metropolitan
areas; in some areas, they would constitute nearly a complete ban on the communication of
truthful information.” The court held that the act was over inclusive and was therefore69
unconstitutional.70
This article argues that this case is similar to the Lanham Act's disparaging provision
because like the disparaging provision, it is vastly over and under inclusive. An example of the
Lanham Act’s over inclusivity arises from Boston Red Sox Baseball Club Limited Partnership v.
Brad Francis Sherman (Red Sox). In Red Sox, Sherman was attempting to register the mark71
“Sex Rod” that had the same arch and font as the Red Sox logo, except the consonances were
traded to the opposite word. The TTAB held that the “Sex Rod” mark could be classified as
Id.66
Id at 534-35.67
Id at 562 (citing Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 417 (1993)).68
Lorillard Tobacco Co., 533 U.S. at 532.69
See generally Lorillard Tobacco Co., 533 U.S. 525.70
Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, 2008 TTAB71
LEXIS 67 (Trademark Trial & App. Bd. Sept. 9, 2008).
!22
23. disparaging for purposes of § 2(a) and therefore should not be granted trademark protection.72
Although, “Sex Rod” is an inappropriate mark, what group does it disparage? The purpose of
the Lanham Act’s disparaging provision is to protect minorities from being disparaged against,
not to protect everyone from getting their feelings hurt. There exist other remedies for the Red
Sox to use to get Sherman to stop using the Sex Rod mark, e.g.: suing for trademark
infringement by diluting a famous mark, etc. Additionally, the disparaging provision is vastly
under inclusive as well. Some examples of marks that have been granted trademark protection
and have not been cancelled are: “Dangerous Negro” Shirts ; “Dumb Blonde” Beer ;73 74
“Retardipedia” ; “Gringo BBQ” ; etc. These are all marks that could easily be seen as75 76
disparaging, and yet, they have not been denied trademark protection.
Therefore, the Lanham Act's disparaging provision is both overly and under inclusive for
it to be narrowly tailored enough to meet its substantial interest and therefore should be held to
be unconstitutional.
See Id.72
Dangerous Negro—Search Trademarks, http://www.uspto.gov/trademarks-application-process/73
search-trademark-database (last visited Apr. 30, 2016).
Dumb Blonde—Search Trademarks, http://www.uspto.gov/trademarks-application-process/74
search-trademark-database (last visited Apr. 30, 2016).
Retardipedia—Search Trademarks, http://www.uspto.gov/trademarks-application-process/75
search-trademark-database (last visited Apr. 30, 2016).
Gringo BBQ—Search Trademarks, http://www.uspto.gov/trademarks-application-process/76
search-trademark-database (last visited Apr. 30, 2016).
!23
24. IV. GOVERNMENTAL SUBSIDY
This section argues that the Spending-Powers Doctrine is not activated here because (1)
the government is not necessarily providing a benefit out to individuals as compared to
“traditional” subsidies; (2) that the Lanham Act arises out of the Commerce Clause versus the
Spending Clause; and (3) that property rights should not be grouped in the realm of benefits that
could be considered as a governmental subsidy. There is not a lot of case law on whether
property rights should amount to a government subsidy and the appropriation argument the
Federal Circuit advanced; therefore, this section is more policy driven than supported by case
law.
A. Should a property right be a subsidy?
The biggest question that arises out of Tam that will make a substantial difference in a
court making their decision—in reference to the “subsidy” argument—is whether granting a
property right should be a “subsidy”. If the Lanham Act were to be classified as a subsidy and77
fell within the subsidy exception, it would allow content-based discrimination as long as it was in
furtherance of the program. However, the subsidy exception does not except viewpoint78
discrimination, so if a court were to find the Lanham Act's disparaging provision to be viewpoint
discrimination, there would be no need to look to this exception.79
Tam, 808 F.3d at 1352-53.77
See Nat’l Endowment of the Arts v. Finley, 524 U.S. 569 (1998).78
Id.79
!24
25. i. Is the Spending-Power Doctrine activated?
When the Federal Circuit decided that Lanham Act was not a government subsidy, they
said it is because, “. . . since 1991 [trademark] appropriations have been funded entirely by
registration fees, not the taxpayers.” Moreover, “The fact that registration fees cover all of the80
operating expenses associated with registering marks is further evidence that, despite conveying
valuable benefits, trademark registration is not a government subsidy.” Essentially, the Federal81
Circuit decided that since no tax dollars are being spent to fund the PTO, it would therefore not
activate the Spending-Power Doctrine. Additionally, the Federal Circuit noted:
. . . the Lanham Act [deriving] from the Commerce Clause, not the Spending
Clause, is further evidence that trademark registration is not a subsidy. The
purpose of the Lanham Act is to regulate marks used in interstate commerce,
prevent customer confusion, and protect the goodwill of markholders, 15 U.S.C. §
1127, not to subsidize markholders.82
The Federal Circuit observed that the Lanham Act arose solely out of the Commerce Clause and
therefore should not be viewed as a subsidy.
The first counterargument the government is likely to raise is the Court focused too
narrowly on what money was being spent by the PTO. The Court seemed to look solely at the
registration portion of the PTO’s functions; however, the government has put more money into
trademarks because they operate and pay the salaries of the judges, clerks, etc. The government
Tam, 808 F.3d at 1353 (citing Figueroa v. United States, 466 F.3d 1023, 1028 (Fed. Cir.80
2006)).
Tam, 808 F.3d at 1353.81
Id at 1354.82
!25
26. also pays the board of examiners’ salaries, the utility costs in the PTO building, etc. However,
this argument is overly broad and could impact a lot more than just trademarks were this
argument be allowed to succeed. The government could then say that everything they put money
into is, in effect, a subsidy. For example, the government puts money into the national parks,
they maintain them and pay for their operating costs. One day, the government decides that they
do not want to allow anyone onto the grounds who wear a Russian or Chinese flag—a content-
based restriction. Under this argument, the government would be allowed to argue that in their
funding the operations of the national parks, they should be able to fall out of the strict scrutiny
requirement because the national parks are a government “subsidy”. This is overly broad and too
extreme to be allowed to stand.
The Federal Circuit was correct in narrowly looking to registration fees of individual’s or
business’s marks with the PTO. There is a pretty substantial difference between the “subsidy”
the government is arguing here versus the subsidies which have been allowed to stand in the past.
In past subsidies, the common theme is that the government has actively paid out money to
individuals, corporation, organizations, etc.; however, that is not the case here. The PTO does83
not pay anything to organizations for registering non-disparaging trademarks, so the essential
question this boils down to is whether or not property rights amount to a governmental subsidy?
See Nat’l Endowment of the Arts v. Finley, 524 U.S. 569 (1998); United States v. American83
Libraries Assoc., Inc., 539 U.S. 194 (2003) (plurality opinion).
!26
27. ii. Property rights should not be a subsidy
The next concern is whether the issuance of property rights to an individual or
corporation should be the same as paying money out as a subsidy. The Federal Circuit addressed
this concern by saying:
Trademark registration does not implicate the Spending Clause merely because of
this attenuated spending, else every benefit or regulatory program provided by the
government would implicate the Spending Clause. The Copyright Office is only
partially funded by user fees, but copyright registration is nonetheless not a
subsidy.84
Similarly to arguments touched on in Part V of this article, the issuance of property rights should
not rise to the “level” of a subsidy. Just because you receive property rights in something does85
not necessarily mean you are going to receive a benefit from having that right. For example,
Lauren Lawstudent writes a book called “The Tales of a Law Student” and receives a Copyright
from the government for her work. She would have immediate rights that she could enforce
against those seeking to violate her copyright; however, she could have written the worst book
and therefore nobody buys it or even tries to copy it. She received no tangible benefit from that.
Additionally, the government is not physically paying her money when they grant her a
copyright. The market would pay her money, if the decided to go to the store a purchase her
novel. This is distinguishable from if the government were to pass an act called the Law Student
Tam, 808 F.3d at 1353(citing Copyright Office Fees: Registration, Recordation and Related84
Services; Special Services; Licensing Division Services; FOIA Services, 79 Fed.Reg. 15910-01
(Mar. 24, 2014)).
See supra Part V.85
!27
28. Awareness Act, which allows for a $5,000 grant to be paid out to any and all law students that
write at least a 100-page book about their law school experience. If Lawstudent’s book was over
100 pages, then she would receive the $5,000 grant by complying with the subsidy.
Therefore, Property rights alone should not rise to the level of a government subsidy for
purposes of this exception.
V. GOVERNMENT SPEECH
A. Trademarks being government speech is legally unsound
Another argument the government raises is that of government speech. In order for86
something to be classified as government speech, the court looks at four factors: (1) the central
purpose of the program in which the speech in question occurs; (2) the degree of editorial control
exercised by the government or private entities over the content of the speech; (3) the identity of
the literal speaker; and (4) whether the government or the private entity bears the ultimate
responsibility for the content of the speech.87
In this case, the the government did not argue the four-factored test, the principle
argument the government makes is that “. . . trademark registration and the accouterments of
registration—such as the registrant’s right to attach the ® symbol to the registered mark, the
mark’s placement on the Principal Register, and the issuance of a certificate of registration—
amount to government speech.” Essentially, the government argues that since you are allowed88
Tam, 808 F.3d at 1345.86
Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 460, (E.D. Va. 2015) (citing Sons of87
Confederate Veterans v. Vehicles, 288 F.3d at 618).
Tam, 808 F.3d at 1345.88
!28
29. to attach the “®” symbol and get a certificate of registration, it would convert your trademark to
government speech. This article, along with the Federal Circuit, disagree and believe that89
trademarks are not government speech.90
In refuting the government’s arguments, the Court cites to a few cases; the most “famous”
of these cases being the Walker v. Texas Division, Sons of Confederate Veterans (Walker). In91
the Walker case, the court concluded that specialty license plates are government speech, even
though citizens were allowed to request certain designs. The reasons for their decision are92
because:
“… license plates have conveyed more than state names and vehicle identification
numbers, they long have communicated messages from States.” . . . “[t]he State
places the name ‘TEXAS’ in large letters at the top of every plate,” that “the State
requires Texas vehicle owners to display license plates, and every Texas license
plate is issued by the State,” that “Texas also owns the designs on its license
plates,” and that “Texas dictates the manner in which drivers may disposed of
unused plates.”93
The Federal Circuit found that the government’s argument was at odds with this Supreme Court
case, because “when the government registers a trademark, the only message it conveys its that a
Id.89
Id.90
Id at 1346.91
Id.92
Tam, 808 F.3d at 1346 (citing Walker v. Texas Division, Sons of Confederate Veterans, Inc.,93
135 S. Ct. 2239, 2248 (2015)).
!29
30. mark is registered. The vast array of private trademarks are not created by the government,
owned or monopolized by the government . . .” Additionally, the court used the government’s94
words against them from In re Old Glory Condom Corp., “[The government maintains that] the
issuance of a trademark registration by [the PTO] does not amount to government
endorsement.”95
In addition to what the Federal Circuit decided, it is worthwhile to apply the four-factored
test from SCV to provide an alternate means of getting to the same result. The first factor looks
to the central purpose of the program in which the speech in question occurs. Here, the96
program in question would be the entirety of the Lanham Act. The purpose of the Lanham Act is
to grant trademark protection to businesses so they can make money from their brands without
fear of being ripped off by another brand. However, one is likely to argue, as Judge Reyna did in
his dissent that the purpose of the Lanham Act is to promote the free flow of commerce, which is
inherently a governmental function. The response to this is that the Lanham Act’s purpose is to
assist businesses in monetizing and protecting their brands—especially a young brand—but it
would come down to the judges/justices to make their determination on how this factor would
weigh. Therefore, for purposes of this article, this will be a neutral factor.
The second factor looks to the degree of editorial control exercised by the government or
private entities over the content of the speech. Arguably, the government does not have any97
Tam, 808 F.3d at 1346.94
Id (citing In re Old Glory Condom Corp., 26 U.S.P.Q.2d 1216, 1219-20 n. 3 (T.T.A.B. Mar. 3,95
1993).
Pro-Football, Inc., 112 F. Supp. 3d at 460.96
Pro-Football, Inc., 112 F. Supp. 3d at 460.97
!30
31. control over the mark’s editorial control. The company picks the best logo or mark to represent
the products they are trying to sell and they register it. This is distinguishable from the Walker
case because if you want a specific license plate to use on your car, the government has to
approve the plate design before you are allowed to use it. You are not allowed to unilaterally
make up your own plate and put it on your can without permission from the government. In the
Walker case, the government has ultimate editorial control. However, in this case, even though
the government can tell you that you are not allowed to have enforceable trademark rights to
your mark, it may not stop you from using your mark out in commerce, should you decide to do
so. Therefore, this factor would seem to weigh more in favor of this not being government
speech.
The third factor looks to the identity of the literal speaker. Here, the literal speaker98
would be the business that develops and comes up with the mark. When you walk into a
Walmart, Apple Store, etc., the average consumer does not look at the mark and think it is a
governmental mark. When you see the mark, the mark speaks for the business, not the
government. Therefore, this factor would weigh more in favor of non-government speech.
The final factor looks to whether the government or the private entity bears the ultimate
responsibility for the content of the speech. This factor would also weigh more in favor of99
trademarks not being government speech, because if John Doe were to create a mark called “All
Asians Suck”, and tried to create a brand around that mark, Doe, as owner of the mark, would be
the one ultimately responsible for the mark. If people disagreed with his mark, they would
Id.98
Id.99
!31
33. arise from this case if the government’s argument were to be given merit. Therefore, from both a
policy and legal perspective, there is no government speech exception here.
VI. VAGUENESS
A. Section 2(a) is not clear enough to be constitutional from a legal perspective
Although not addressed in the majority opinion—Judge O’Malley addressed this in her
concurrence—there is a vagueness issue. O’Malley came to the same outcome as the majority100
did (in regards to everything in Parts II-V) and she further believed that the Lanham Act's
disparaging provision failed under the vagueness doctrine. It was decided in Grayned v. City101
of Rockford that the test for vagueness is:
First, because we assume that man is free to steer between lawful and unlawful
conduct, we insist that laws give the person of ordinary intelligence a reasonable
opportunity to know what is prohibited, so that he may act accordingly. Vague
laws may trap the innocent by not providing fair warning. Second, if arbitrary
and discriminatory enforcement is to be prevented, laws must provide explicit
standards for those who apply them. A vague law impermissibly delegates basic
policy matters to policemen, judges, and juries for resolution on an ad hoc and
subjective basis, with the attendant dangers of arbitrary and discriminatory
application.102
Tam, 808 F.3d at 1358-64.100
Id.101
Grayned v. City of Rockford, 408 U.S. 104, 108-109 (1972).102
!33
34. Additionally, it has been determined that, “[t]he degree of vagueness the Constitution tolerates . .
. depends in part on the nature of the enactment. . . . [i]f, for example, the law interferes with the
right of free speech . . ., a more stringent vagueness test should apply.”103
In applying this test, O’Malley found that this violates, not only the heightened vagueness
test, but also the more lax test for vagueness. One of O’Malley biggest concerns is that “ . . .104
the absence of clear standards for the application of § 2(a) provides the government with
virtually unlimited ability to pick and choose which marks to allow and which to deny.”105
O’Malley is also concerned with the individual’s over-sensitivities.106
The use of the word “disparaging” as the standard without any accompanying factors or
guidance, except for other marks the PTO have found to be disparaging, is not enough to give an
individual of “reasonable intelligent” notice of what they must comply with, especially when
marks like “Retardipedia”, “Dangerous Negro” and “Gringos BBQ” are not cancelled. This
would cut against the first “prong” from Grayned. The second “prong” from Grayned states that,
“ . . . if arbitrary and discriminatory enforcement is to be prevented, laws must provide explicit
standards for those who apply them” Here, the only word that is the test for the examiners to107
use in determining whether or not to grant trademark protection is the word “disparage”. This
word, by itself, is not enough to pass the test for vagueness. We are expressly concerned with
judges, juries, administrators, examiners, etc. from applying too much of their subjective ideals
Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455 U.S. 489, 498-99 (1982).103
Tam, 808 F.3d at 1360-61.104
Id. at 1361.105
Id. at 1360.106
Grayned, 408 U.S. at 108-09.107
!34
35. versus being objective as to the law. Since the only constraint judge, jurors, etc. would have to
go off of is “disparage” and everyone’s definition of “disparaging” are so drastically different
and are usually tied to upbringings, it should also cut against the second factor too.
However, one counterargument the government is likely to raise is one arising from
Hoffman. The Hoffman court determined that:
. . . economic regulation is subject to a less strict vagueness test because its
subject matter is often more narrow, and because businesses, which face
economic demands to plan behavior carefully, can be expected to consult relevant
legislation in advance of action. Indeed, the regulated enterprise may have the
ability to clarify the meaning of the regulation by its own inquiry, or by resort to
an administrative process.108
The government would make an argument that this is not something that pertains to free speech,
per se, it has more to do with commerce, so the court should apply a less stringent vagueness test
and the Lanham Act's disparaging provision should be allowed to pass this less stringent test.
In response to this counterargument, the disparaging provision deals with more of a
speech and constitutional rights. Even though there are businesses involved in the current case,
the court should still apply a higher vagueness standard, because the resulting decision the court
decides does not just affect this one business, it would affect multiple business’s right to express
themselves through the marks they choose. Additionally, the Lanham Act's disparaging
provision is arguably so vague that it should not be allowed to pass, even the lower vagueness
standard for economic regulation.
Hoffman, 455 U.S. at 498.108
!35
36. Therefore, the Lanham Act's disparaging provision should fail under the vagueness test
from Hoffman.
B. Bad policy for § 2(a) to survive vagueness
From a policy standpoint, it would harmful to not find § 2(a) to be overly vague. Take
the following example, Jane Doe plans to start a company today called “Flipper’s Frozen
Flakes”. It is a company that produces and sells frozen chips and becomes a massive, multi-
billion dollar corporation. As of right now, there would appear to be no problem with the name;
however, we are unsure about what could be acceptable in 10 years, 15 years, or longer.
Advancing 15 years into the future, “Flipper” becomes a disparaging term for those who are
from Irish descent and therefore the group seeks to invalidate the term. Should they be allowed
to do that? Take the current case. The band named “The Slants” was found to be disparaging to
a substantial composite of the Asian population and therefore denied trademark protection.
However, how can one determine truly what is “disparaging”? Personally, as someone from
Asian descent, “The Slants” does not appear to be disparaging or belittling in the least towards
the Asian population.
The government should allow the market take its course. If a mark is truly disparaging,
then consumers will not buy from the mark holder; either, (1) for fear of ridicule from friends
and colleagues, (2) because the mark is personally disparaging to themselves, or (3) because they
legitimately believe the mark is so bad, that they can not buy from someone who would hold
such a mark. That, in result, would drive that individual/corporation out of business or would
harm their ability to grow to a larger market, because, although that mark may be acceptable in a
certain market, it would not be accepted in a larger market. Especially, taking into consideration
!36
37. the social media presence and how the voice of one individual can be shared and seen by
millions of people across the world.
However, as a counter-policy point, all laws are going to be vague one way or another
and that is why we have an adjudicatory system of government to be able to determine the
meanings of “disparaging”. Additionally, as far as the future element goes, there is absolutely
nothing one can do about the future. We do not know what will happened tomorrow, let alone 15
years from now, and we cannot invalidate all of our laws just because of something that could
happen in the future. In response to the market effect proposed above, the argument could be
made that it is an imperfect system as well. Take into consideration the Washington Redskins—a
current case being litigated before the Fourth Circuit. Those of Native American descent109
would assert that consumers do not always react to disparaging marks negatively because the
Redskins have a net worth of $2.85 billion in 2016, which is up from $1.7 billion in 2013.110
This jump in valuation between 2013 and 2016 occurred after the Redskins were pulled back into
the public light for having a disparaging mark.
A response to these counterarguments would be that the Lanham Act's disparaging
provision is imperfect too. The PTO is invalidating marks that are not disparaging and are
allowing some that are disparaging by a substantial composite of an affected minority. This
article asserts that the market should be allowed to take its course and sift out the truly
disparaging marks.
See Pro-Football v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015).109
http://www.forbes.com/teams/washington-redskins/ (last visited Mar. 19, 2016).110
!37
38. Conclusion
The Lanham Act's disparaging provision does violate the First Amendment of the
Constitution. The government cannot escape this by trying to assert that this falls under the
government speech or government subsidy exceptions. First, this article asserts that, in addition
to what was decided in the Federal Circuit’s opinion, the Lanham Act's disparaging provision
unlawfully abridges one’s right to speak freely. Moreover, Section 2(a) of the Lanham Act is111
viewpoint discriminatory because the government approves and denies trademarks over the ideas
they convey and not off of general topics. Additionally, when the lower intermediate scrutiny112
test from Central Hudson is applied against the Lanham Act's disparaging provision, it fails and
so would also fail under strict scrutiny. Although, the Federal Circuit and this article came to113
the same conclusion, the ways of reaching it are different. The Federal Circuit determined114
that the government did not have a compelling enough of an interest in passing the disparaging
provision; whereas, this article asserts that the government does have a compelling interest, but
the act itself is not narrowly tailored enough to pass. In an attempt to escape the strict scrutiny115
requirement, the government tried to assert that the Lanham Act was a government subsidy and
they should be allowed to “allocate” funds to those who use a mark that furthers the
government’s purpose. This article, along with the Federal Circuit, argues that this does not116
See supra Part I.111
See supra Part II.B.112
See supra Part III.B.113
See supra Part III.B.i.114
Id.115
See supra Part IV.116
!38
39. even fall within the bounds of a government subsidy and therefore does not need to be analyzed
under the subsidy test. In addition, the government also argued that “®” should be classified117
as government speech and should therefore be exempt from constitutional requirements.118
However, this does not seem to be government speech, for both policy and legal rationales.
Finally, this article looked at the vagueness test under the concurrence by Judge O’Malley. It119
was argued that the Lanham Act's disparaging provision is overly vague and therefore
unconstitutional. Although, as stated before, this article not endorse—unless stated otherwise120
—the marks discussed in this article, the Lanham Act's disparaging provision is unconstitutional
and these marks—The Slants, Redskins, etc.—should be allowed to have trademark protection.
See supra Part IV.A.117
See supra Part V.118
See supra Part VI.119
See supra Part VI.120
!39
