In June, Prof. Hansen filed an amicus brief in the sua sponte hearing en banc ordered by the Court of Appeals for the Federal Circuit in In re: Simon Shiao Tam. The hearing followed from the Federal Circuit panel decision taken on appeal from the Trademark Trial and Appeal Board (TTAB). The case presented the issue of whether the USPTO Trademark Examining Attorney and TTAB had erred in refusing to register the trademark of Mr. Tam’s band, THE SLANTS, on grounds that it was disparaging to people of Asian descent under section 2(a) of the Lanham Act. Underlying this issue was the important question of whether the Act’s restrictions on disparaging marks are unconstitutional under the First Amendment, both facially and as applied to Tam, since the Act might be read to condition a benefit – trademark registration – on relinquishing of speech. Prof. Hansen urged the Court to overturn the Federal Circuit’s affirmance of the TTAB action, offering a legal realist approach to the First Amendment that emphasized the adverse, unintended consequences to freedom of expression of denying registration.

As in all free speech cases, the court is required to decide: how much does speech need to be protected on these facts, and in what manner? Prof. Hansen’s argument, based on a balance of both legal and practical considerations, sought to demonstrate that in order to limit adverse consequences, expressive marks (even such as THE SLANTS) need high protection from denial of registration by the “disparagement” clause.

To begin with, the brief cited doctrinal flaws in the decision relied on by the Federal Circuit panel to uphold the TTAB’s action, In re McGinley (C.C.P.A. 1981). In McGinley, the court stated that “With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.” That is, since failure to register does not impair the right to use the mark as one pleases, the Act’s provisions do not impose an unconstitutional restraint on speech. Yet as Prof. Hansen argued, this logic is based on outdated assumptions, now overtaken by a new reality that has altered how speech is produced and consumed.

As Prof. Hansen observed, McGinley assumes an ideal “marketplace of ideas,” where no idea is sacred, and truth wins out in a process of scrutiny and free-for-all debate. When Justice Holmes deployed the phrase over a hundred years ago, the concept may have been viable. But now, as Prof. Hansen noted, we live in discursive silos, with TV programs and the internet geared to specific ideological groups seeking affirmation of their beliefs. Likewise in the public square, where private groups coalesce around politically correct orthodoxies, and opposing views are admitted only to be mocked. In this environment, registering a controversial mark would be socially beneficial, encouraging debate and the formation of a nascent marketplace of contending ideas.

Prof. Hansen also argued that to allow registration of a potentially controversial mark – like THE SLANTS – would not disrupt a long-standing practice of government’s accommodation of society’s politically correct tendencies. There was no such practice until recently! This is because this type of disparagement enforcement is relatively new, and was not envisioned by legislators who adopted the Lanham Act in 1946. Moreover, imagine how disruptive it would be if some revered but recent marks, such as that of the NAACP, were now challenged. The mark was only registered in 1982, and has not been around nearly long enough to prevent zealots from objecting to the term Colored People; zealots on the other side could also seek to undo the mark, thus exposing the entire system as a paradise for disparagement trolls spouting “heartfelt” beliefs. As Prof. Hansen put it, “application of the First Amendment here would not disrupt a valuable regime. Rather, it would disable a regime that is already badly flawed.”

Prof. Hansen made additional arguments not usually cited in disparagement cases. For example, he reminded the court that in Procunier v. Martinez (1974), Justice Marshall observed that the First Amendment “serves not only the needs of the polity but also those of the human spirit – a spirit that demands self-expression.” Applying this language, Prof. Hansen noted that by allowing the TTAB to determine for others what is disparaging for them, section 2(a) interferes with the ability of individuals and groups to define themselves. Such paternalism has been consistently discouraged.

Prof. Hansen noted as well the significant harm to mark owners who have been denied registration. As a consequence of denial, the mark is permanently stigmatized, resulting is loss of sales, licensing fees, and investment in the mark. It will be hard to build up goodwill in the mark, allowing it to become “fair game” for free riders who know that enforcement by the owner will be difficult. (Ironically, this might cause more dissemination of an offensive mark than if it had been registered). Barring registration would also preclude protection for collective marks, since there is no protection for them in the common law.

Based on these arguments, the brief urged the Court to find that the bar to registration of disparaging marks violates the First Amendment and, as a consequence, the TTAB should be ordered to register THE SLANTS.

Fordham IP Institute