Case Information
*1 Before L OURIE , M OORE , and O’M ALLEY , Circuit Judges. M OORE , Circuit Judge .
Simon Shiao Tam appeals from the decision of the Trademark Trial and Appeal Board (the Board) affirming the examining attorney’s refusal to register the mark THE SLANTS because it is disparaging. We affirm .
B ACKGROUND Mr. Tam is the “front man” for Asian-American dance rock band The Slants. In 2010, Mr. Tam filed Application No. 77/952,263 (’263 application) seeking to register the mark THE SLANTS for “Entertainment, namely, live performances by a musical band.” Mr. Tam attached specimens featuring the band name set against Asian motifs to the ’263 application. The examining attorney found the mark disparaging to people of Asian descent under 15 U.S.C. § 1052(a) (“§ 2(a)”) and therefore refused to register it. Mr. Tam appealed that refusal to the Board, but the case was dismissed for failure to file a brief and the application was deemed abandoned. On Novem- ber 14, 2011, six days after the abandonment of the ’263 application, Mr. Tam filed a second application (Applica- tion No. 85/472,044, or the ’044 application) seeking to register the mark THE SLANTS for essentially identical services as in the ’263 application. In the ’044 applica- tion, Mr. Tam claims use of the mark since 2006. Unlike the specimens attached to the ’263 application, the speci- mens attached to the ’044 application do not contain Asian motifs. The examining attorney again found the mark THE SLANTS disparaging and declined to register it. In making this determination, the examining attorney cited to materials that he had gathered in response to Mr. Tam’s earlier application. Mr. Tam responded and a final office action issued.
The Board affirmed the examining attorney’s refusal to register the mark. The Board found that “it is abun- dantly clear from the record not only that THE SLANTS . . . would have the ‘likely meaning’ of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performanc- es.” In re Tam , No. 85472044, 2013 WL 5498164, at *5 (TTAB Sept. 26, 2013). To support this conclusion, the Board pointed to the band’s website, which displayed the mark next to “a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image,” and to a statement by Mr. Tam that he selected the mark in order to “own” the stereotype it represents. Tam , 2013 WL 5498164, at *5. The Board also found that the mark is disparaging to a substantial component of people of Asian descent because “[t]he dictionary definitions, refer- ence works, and all other evidence unanimously catego- rize the word ‘slant,’ when meaning a person of Asian descent, as disparaging,” and because there was record evidence of individuals and groups in the Asian communi- ty objecting to Mr. Tam’s use of the word “slant.” Tam , 2013 WL 5498164, at *7. The Board therefore disquali- fied the mark for registration under § 2(a). Mr. Tam appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4).
D ISCUSSION Mr. Tam argues that the Board erred in finding the mark THE SLANTS disparaging under § 2(a) of the Lanham Act and therefore unregistrable. Mr. Tam also challenges the constitutionality of § 2(a).
I. Disparagement Analysis Section 2(a) of the Lanham Act provides that the Pa- tent and Trademark Office (PTO) may refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a). A disparaging mark “‘dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.’” In re Geller , 751 F.3d 1355, 1358 (Fed. Cir. 2014) (quoting Pro-Football, Inc. v. Harjo , 284 F. Supp. 2d 96, 124 (D.D.C. 2003)) (alterations omitted). In Geller , we applied a two-part test to determine if a mark may be disparaging:
(1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
Id. This determination is “a conclusion of law based upon underlying factual inquiries.” Id. We review the Board’s factual findings for substantial evidence, and its ultimate conclusion de novo. Id.
A. Use of Prior Applications As a threshold matter, Mr. Tam argues that the exam- ining attorney and the Board should not have considered evidence gathered by the examining attorney while eval- uating the earlier ’263 application. We disagree. The examining attorney may look to evidence outside the application, such as dictionary definitions and newspaper articles, when determining the “manner of use” of the mark. See In re Bayer Aktiengesellschaft , 488 F.3d 960, 966–69 (Fed. Cir. 2007). Mr. Tam claims use of the mark THE SLANTS back to 2006, before he filed the ’263 application. Evidence gathered in response to the ’263 application is relevant to determining the mark’s manner of use for the time period during which Mr. Tam asserts the mark was in use. While the evidence gathered during the evaluation of the ’263 application derives from an abandoned application dated before the ’044 application’s filing date, its use was not improper.
B. Likely Meaning
To determine if a mark is disparaging, we first con-
sider “the likely meaning of the matter in question.”
Geller
,
There is no dispute that the term “slants” has a num- ber of meanings, one of which refers to people of Asian descent. The Board cited a number of traditional and slang dictionaries defining the word with reference to people of Asian descent, ranging from Oxford Reference Online to www.urbandictionary.com. Tam , 2013 WL 5498164, at *1–2 & n.3. Even the dictionary entries supplied by Mr. Tam include as possible definitions for the term “slant” “a disparaging term for a person of East Asian birth or ancestry,” J.A. 219 ( The American Heritage Dictionary of the English Language ), and “[a] person with slanting eyes, spec. one of Oriental descent,” J.A. 234–36 ( Oxford English Dictionary ).
The fact that the term “slants” has some innocuous meanings—and that some trademarks have issued with those innocuous meanings—does not foreclose the possi- bility that the term may also be used in an offensive manner, even when the non-disparaging meanings are more common. See Tam , 2013 WL 5498164, at *5. Ra- ther, the existence of these other meanings makes it necessary to examine how the applicant uses the mark in the marketplace to determine its likely meaning—as the Board did.
The evidence here supports the Board’s finding that
the mark THE SLANTS likely refers to people of Asian
descent. For example, an article in the record includes a
quote attributed to Mr. Tam where he describes the
genesis of the band’s name by explaining: “I was trying to
think of things that people associate with Asians. Obvi-
ously, one of the first things people say is that we have
slanted eyes. . . .” J.A. 130. The record also contains the
band’s entry in Wikipedia, which states that the band’s
name is “derived from an ethnic slur for Asians.” J.A. 57.
The Wikipedia entry quotes Mr. Tam: “We want to take
on these stereotypes that people have about us, like the
slanted eyes, and own them. We’re very proud of being
Asian—we’re not going to hide that fact. The reaction
from the Asian community has been positive.”
Id.
Fur-
thermore, the record includes an image from the band’s
website in which the mark THE SLANTS is set against “a
depiction of an Asian woman, utilizing rising sun imagery
and using a stylized dragon image,” as described by the
Board.
Tam
, 2013 WL 5498164, at *2, 5 (citing J.A. 59).
Finally, the record includes evidence that both individuals
and Asian groups have perceived the term as referring to
people of Asian descent.
Tam
,
Mr. Tam also argues that we should not consider this evidence because it is unauthenticated hearsay and does not satisfy the requirements of 37 C.F.R. § 2.122(a), which applies the Federal Rules of Evidence to inter partes proceedings. However, § 2.122(a) does not apply to ex parte proceedings. For ex parte proceedings, the Board has adopted a “somewhat more permissive stance with respect to the admissibility and probative value of evi- dence.” T RADEMARK T RIAL & A PPEAL B OARD M ANUAL OF P ROCEDURE § 1208. In ex parte proceedings, the Board permits the examining attorney to consider Internet material. Id. § 1208.03. We see no error in the Board’s procedures.
C. Whether the Meaning May Be Disparaging to a Sub-
stantial Composite of the Referenced Group If the likely meaning of the mark “is found to refer to identifiable persons, institutions, beliefs or national symbols,” we next consider “whether that meaning may be disparaging to a substantial composite of the refer- enced group.” Geller , 751 F.3d at 1360. Substantial evidence supports the Board’s finding that the mark THE SLANTS is likely offensive to a substantial composite of people of Asian descent.
First, the definitions in evidence universally charac-
terize the word “slant” as disparaging, offensive, or an
ethnic slur when used to refer to a person of Asian de-
scent.
Tam
, 2013 WL 5498164, at *1–2, 7 & n.3. This
includes the dictionaries provided by Mr. Tam in his
response to office action. J.A. 219, 234–36. Additionally,
the record includes a brochure published by the Japanese
American Citizens League describing the term “slant,”
when used to refer to people of Asian descent, as a “de-
rogatory term” that is “demeaning” and “cripple[s] the
spirit.” J.A. 48–49. The record also includes news articles
and blog posts discussing the offensive nature of the
band’s name, which led to the cancellation of the band’s
scheduled performance at a conference for Asian youth.
Tam
,
II. Constitutionality of § 2(a) Having affirmed the Board’s holding that the mark is disparaging, we next turn to Mr. Tam’s constitutional challenges.
A. First Amendment Mr. Tam argues that the Lanham Act’s restrictions on disparaging trademarks are unconstitutional under the First Amendment both facially and as applied to his case because § 2(a) conditions a benefit—trademark registra- tion—on the relinquishment of speech. This argument is foreclosed by our precedent. In In re McGinley , our prede- cessor court wrote:
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, appel- lant’s First Amendment rights would not be abridged by the refusal to register his mark.
660 F.2d 481, 484 (C.C.P.A. 1981). In subsequent cases, we have accepted this reasoning. In re Boulevard Entm’t, Inc. , 334 F.3d 1336, 1343 (Fed. Cir. 2003) (“[T]he refusal to register a mark does not proscribe any conduct or suppress any form of expression because it does not affect the applicant’s right to use the mark in question.”); In re Mavety Media Grp. , 33 F.3d 1367, 1374 (Fed. Cir. 1994); see also In re Fox , 702 F.3d 633, 635 (Fed. Cir. 2012) (“Because a refusal to register a mark has no bearing on the applicant’s ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trademark applicants.”). We here follow our precedent.
B. Vagueness Mr. Tam also argues that the disparagement standard of § 2(a) is unconstitutionally vague. He claims that key terms of § 2(a), such as “scandalous” and “disparage,” are not “clearly defined” and are necessarily subjective. He argues that § 2(a) therefore does not give “the person of ordinary intelligence a reasonable opportunity to know what is prohibited.” Grayned v. City of Rockford , 408 U.S. 104, 108 (1972).
We have noted with respect to § 2(a)’s bar on scandal-
ous subject matter the “inherent difficulty in fashioning a
single objective measure like a substantial composite of
the general public from the myriad of subjective view-
points.”
Mavety
,
C. Due Process Mr. Tam argues that the PTO applies the disparage- ment provisions arbitrarily and without clear guidelines. He points to registered trademarks containing slurs against homosexuals such as DYKES ON BIKES, U.S. Registration No. 3323803, as evidence of the arbitrary nature of trademark adjudication.
We have rejected similar due process challenges to
§ 2(a). In both
Boulevard Entertainment
, 334 F.3d at
1343, and
In re Shinnecock Smoke Shop
, 571 F.3d 1171,
1174 (Fed. Cir. 2009), the applicant argued that by refus-
ing to register his mark while granting similar marks, the
PTO had violated the Due Process clause. In these cases,
we found no due process violation because the applicant
“was provided a full opportunity to prosecute his applica-
tions and to appeal the examining attorney’s final rejec-
tions to the Board.”
D. Equal Protection Lastly, Mr. Tam argues that because the examining attorney’s disparagement analysis hinged on his and his bandmates’ ethnic identities, the rejection of the mark violated the equal protection clause. To support this argument, Mr. Tam points to the Final Office Action, which states:
Here, the evidence is uncontested that applicant is a founding member of a band (The Slants) that is self described as being composed of members of Asian descent. . . . Thus, the association of the term SLANTS with those of Asian descent is evi- denced by how the applicant uses the Mark – as the name of an all Asian-American band.
J.A. 244. Mr. Tam argues the examining attorney’s race- based determination is neither justified by a compelling government interest nor narrowly tailored towards achieving that goal.
We reject Mr. Tam’s equal protection argument. The
record shows that the Board denied Mr. Tam the registra-
tion because he used the mark THE SLANTS in a dispar-
aging manner, not on account of his race. The Board
wrote that “[a]n application by a band comprised of non-
Asian-Americans called THE SLANTS that displayed the
mark next to the imagery used by applicant . . . would
also be subject to a refusal under Section 2(a).”
Tam
,
C ONCLUSION We affirm the Board’s decision affirming the examin- ing attorney’s refusal to register the mark THE SLANTS because it is disparaging.
AFFIRMED *12 United States Court of Appeals for the Federal Circuit ______________________ IN RE: SIMON SHIAO TAM, Appellant ______________________ 2014-1203 ______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 85472044.
______________________ M OORE , Circuit Judge , additional views.
It is time for this Court to revisit McGinley ’s holding on the constitutionality of § 2(a) of the Lanham Act. Under § 2(a), the PTO may refuse to register immoral, scandalous, or disparaging marks. 15 U.S.C. § 1052(a). In In re McGinley , our predecessor court held without citation to any legal authority in just a few sentences that § 2(a) does not implicate the First Amendment:
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, appel- lant’s First Amendment rights would not be abridged by the refusal to register his mark.
There are three requirements for finding a violation of
the First Amendment. The speech at issue must be
protected speech.
See, e.g.
,
Roth v. United States
, 354
U.S. 476 (1957) (obscenity is not protected by the First
Amendment);
Gertz v. Robert Welch, Inc.
, 418 U.S. 323
(1974) (defamation under certain circumstances is not
protected by the First Amendment);
Chaplinsky v. New
Hampshire
,
example, the
Central Hudson
four-part test for determin-
ing the constitutionality of restrictions on commercial
speech.
Cent. Hudson Gas & Elec. Corp. v. Pub. Serv.
Comm’n
,
I. Are Trade Names Protected Speech?
For many years, commercial speech lay outside the
ambit of the First Amendment. In 1975, the Supreme
Court ruled that the First Amendment protects commer-
cial speech,
Bigelow v. Virginia
,
Today, however, it is unquestionably true that trade- marks are protected speech under Supreme Court com- mercial speech jurisprudence. Commercial speech is the “dissemination of information as to who is producing and selling what product, for what reason, and at what price.” Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc. , 425 U.S. 748, 765 (1976). Protecting the flow of this type of information is “indispensable.” Id. Four years after Bigelow , the Supreme Court held that the trade name of an optometrist is commercial speech. Friedman v. Rogers , 440 U.S. 1, 11 (1979) (“The use of trade names in connection with optometrical practice, then, is a form of commercial speech and nothing more.”). Trade names identify the source of a product or service for users, and thus provide some of the information labeled indispensable by the Supreme Court in Virginia State Board . Indeed, the government has conceded that “[t]rademarks are a form of commercial speech.” Appel- lee’s Br. 34 n.5. Because a trademark identifies the source of a product or service for users, it is protected commercial speech.
While it may be true that many marks are used solely as a source identifier, that is not the case here. Mr. Tam’s mark THE SLANTS does more than merely identify the band in the commercial arena. In Friedman , the Court reasoned that the optician seeking the trade name “does not wish to editorialize on any subject, cultural, philo- sophical, or political. He does not wish to report any particularly newsworthy fact, or to make generalized observations even about commercial matters.” 440 U.S. at 11. Here, by contrast, Mr. Tam seeks to trademark the name of a musical group, selecting the name “The Slants” to “reclaim” and “take ownership” of Asian stereotypes. J.A. 129–30. The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes, J.A. 130, and its albums include “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” The band “feel[s] strong- ly that Asians should be proud of their cultural heritage, and not be offended by stereotypical descriptions.” J.A. 52. With their lyrics, performances, and band name, Mr. Tam and The Slants weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.
II. Is § 2(a) an Abridgement of Speech? A. Benefits of Trademark Registration
The
McGinley
court held that the refusal to register a
mark under § 2(a) does not bar the applicant from using
the mark, and therefore does not implicate the First
Amendment. It is true that § 2(a) does not bar the appli-
cant from using the mark. Here, for example, Mr. Tam’s
band can continue to perform and advertise using the
name “The Slants.” However, as the
McGinley
court
wrote, § 2(a) denies the applicant access to “benefits
provided by the Lanham Act which enhance the value of a
mark.”
benefits on trademark owners who register their marks.”
B&B Hardware, Inc. v. Hargis Ind., Inc.
,
These benefits—unavailable in the absence of federal
registration—are numerous, and include both substantive
and procedural rights. First, the holder of a federal
trademark has a right to exclusive nationwide use of that
mark where there was no prior use by a party other than
the markholder.
See
15 U.S.C. §§ 1072, 1115. Because
under the common law, a markholder only has the right
to exclusive use where he has used his mark before,
see
J. Thomas McCarthy,
McCarthy on Trademarks and
Unfair Competition
§ 26:32 (4th ed.), holders of a federal
trademark have an important substantive right they
could not otherwise obtain. Also, a registered mark is
presumed to be valid, 15 U.S.C. § 1057(b), and the mark
becomes incontestable (with certain exceptions) after five
years of consecutive post-registration use,
id.
§ 1065;
see
also B&B Hardware
,
Not only is a disparaging trademark denied federal
registration, but it cannot be protected by its owner by
virtue of a § 43(a) unfair competition claim.
Id.
§ 1125(a).
Section 43(a) allows for a federal suit, much like state
common law, to protect an unregistered trademark. As
many courts have noted, it is the use of a trademark in
commerce, not its registration, which gives rise to a
protectable right.
Miller v. Glenn Miller Prods., Inc.
, 454
F.3d 975, 979 (9th Cir. 2006) (“Registration does not
create a mark or confer ownership; only use in the mar-
ketplace can establish a mark.”);
In re Int’l Flavors &
Fragrances, Inc.
, 183 F.3d 1361, 1366 (Fed. Cir. 1999)
(“The federal registration of a trademark does not create
an exclusive property right in the mark. The owner of the
mark already has the property right established by prior
use. . . . However, those trademark owners who register
their marks with the PTO are afforded additional protec-
tion not provided by the common law.”). Equally clear,
however, is that § 43(a) protection is only available for
unregistered trademarks
that could have qualified for
federal registration
.
Two Pesos, Inc. v. Taco Cabana, Inc.
,
505 U.S. 763, 768 (1992) (section 43(a) “protects qualify-
ing unregistered trademarks and . . . the general princi-
ples qualifying a mark for registration under § 2 of the
Lanham Act are for the most part applicable in determin-
ing whether an unregistered mark is entitled to protection
under § 43(a)”);
Donchez v. Coors Brewing Co.
, 392 F.3d
1211, 1215 (10th Cir. 2004) (plaintiff must establish that
its mark is protectable to prevail in a claim under § 43(a));
Yarmuth-Dion, Inc. v. D’ion Furs, Inc.
,
Section 2(a)’s bar on disparaging marks was a crea- tion of the federal government, first developed when Congress enacted the Lanham Act. See infra at 21–22. Three years later, the United States Trademark Associa- tion prepared the Model State Trademark Bill—a bill patterned on the Lanham Act in many respects. McCar- thy at § 22:5. The Model Bill contained language barring a mark from registration if it “consists of or comprises matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 1964 Model State Trade- mark Act, § 2. Following the lead of the federal govern- ment, virtually all states have adopted the Model Bill and its disparagement provision. McCarthy at § 22:5. Thus, not only are the benefits of federal registration unavaila- ble to Mr. Tam, so too are the benefits of trademark registration in nearly all states. And as commentators have noted, state statutory and common law schemes mirror Lanham Act protections, making it likely that an unregisterable trademark will have no state protection. McCarthy at § 22:1.50; see also 1964 Model State Trade- mark Act, § 1.C (“The term ‘mark’ as used herein includes any trademark or service mark entitled to registration under this Act whether registered or not.”) (emphasis added).
While denial of registerability and the attendant rights of protection both federal and state do not prevent a trademark owner from using its mark, such denial severely burdens use of such marks. Section 2(a)’s con- tent-based restrictions on registerability were adopted to reduce use of trademarks the government deemed unsuit- able (such as those that disparage)—no doubt a chilling effect on speech.
B. The “Unconstitutional Conditions” Doctrine The Supreme Court has repeatedly held that the gov- ernment cannot deny access to a benefit because of the recipient’s exercise of constitutionally protected speech. Under the “unconstitutional conditions” doctrine,
[E]ven though a person has no ‘right’ to a valuable governmental benefit and even though the gov- ernment may deny him the benefit for any num- ber of reasons, there are some reasons upon which the government may not rely. It may not deny a benefit to a person on a basis that infringes his constitutionally protected interests—especially, his interest in freedom of speech. For if the gov- ernment could deny a benefit to a person because of his constitutionally protected speech or associa- tions, his exercise of those freedoms would in ef- fect be penalized and inhibited.
Perry v. Sindermann
, 408 U.S. 593, 597 (1972). Under
this doctrine, the Supreme Court held that a state college
could not refuse to retain a professor because of his public
criticism of that college’s policy, even though the professor
had no right to reemployment and even though the gov-
ernment had not directly prohibited the professor from
speaking.
Id.
at 597–98. This is because “[t]o deny [a
benefit] to claimants who engage in certain forms of
speech is in effect to penalize them for such speech.”
Speiser v. Randall
,
Since Perry , the Supreme Court has wrestled with the inherent tension between applying the “unconstitutional conditions” doctrine and protecting Congress’ ability to direct government spending. As the Supreme Court has noted, the Spending Clause of the U.S. Constitution, which grants Congress the power “[t]o lay and collect Taxes, Duties, Imposts and Excises, to pay the Debts and provide for the common Defence and general Welfare of the United States,” U.S. Const. Art. I, § 8, cl. 1, “provides Congress broad discretion to tax and spend for the ‘gen- eral Welfare,’ including by funding particular state or private programs or activities.” Agency for Int’l Dev. v. Alliance for Open Soc’y Int’l, Inc. , 133 S. Ct. 2321, 2327– 28 (2013). This includes “the authority to impose limits on the use of such funds to ensure they are used in the manner Congress intends,” even when these limits are conditioned on the recipients’ constitutional rights. Id. at 2328 (citing Rust v. Sullivan , 500 U.S. 173, 195 n.4 (1991)). The Court reasoned that “if a party objects to a condition on the receipt of federal funding,” it can always decline the funds. Id.
Thus, “when the Government appropriates public funds to establish a program it is entitled to define the limits of that program.” United States v. Am. Library Ass’n, Inc. , 539 U.S. 194, 211 (2003) (quoting Rust , 500 U.S. at 194). Under this reasoning, the Supreme Court upheld regulations prohibiting the use of federal family planning funds for abortion counseling and referral ser- vices. Rust , 500 U.S. at 192. Similarly, the Court held that conditioning public libraries’ receipt of federal subsi- dies on their use of Internet filtering software was a valid exercise of Congress’ spending power, because Congress was entitled to insist that “public funds be spent for the purposes for which they were authorized.” Am. Library Ass’n , 539 U.S. at 211–12 (quotation marks omitted). This spending limitation applies to indirect forms of public funding such as tax exemptions as well as direct subsidies. Regan v. Taxation with Representation of Wash. , 461 U.S. 540, 544 (1983) (“Both tax exemptions and tax-deductibility are a form of subsidy that is admin- istered through the tax system.”).
The government’s discretion under the Spending Clause, while broad, is not unbounded. If a program arises from the Spending Clause, Congress is free to attach “conditions that define the limits of the govern- ment spending program—those that specify the activities Congress wants to subsidize.” Agency for Int’l Dev. , 133 S. Ct. at 2328. However, Congress does not have the author- ity to attach “conditions that seek to leverage funding to regulate speech outside the contours of the program itself.” Id. For example, the Court held that Congress could not restrict appropriations aimed at combating the spread of AIDS to only organizations having policies explicitly opposing prostitution and sex trafficking. Id. at 2230–31.
Thus, the analysis of whether Congress has imposed an unconstitutional condition on a federal benefit is affected by the nature of the Congressional benefit— namely, was the benefit authorized pursuant to Congress’ Spending power. Courts have examined whether the conditioned benefit was pursuant to the Spending Clause. For example, the Ninth Circuit considered whether the “unconstitutional conditions” doctrine prevented the government from implementing a treaty under which certain “educational, scientific, and cultural” audio-visual materials were subject to benefits, including exemption from import duties. Bullfrog Films, Inc. v. Wick , 847 F.2d 502, 503 (9th Cir. 1988). Film makers, producers, and distributors argued that the treaty violated the First Amendment. Id . at 504. The government responded by arguing, as it does here, that the regulations stemming from the treaty did not “punish or directly obstruct plain- tiffs’ ability to produce or disseminate their films,” and that any benefits flowing from the regulations were “a case of the government simply declining to pay a subsidy.” Id. at 509. The Ninth Circuit disagreed with the govern- ment’s “benign characterization” of the effect of the regu- lations and reasoned that the trade benefits were not a subsidy because “no Treasury Department funds [were] involved,” and therefore the spending exception did not apply. Id. at 509. The Ninth Circuit held that “by condi- tioning a valuable governmental benefit on the basis of speech content, the [government] forces film makers to choose between exercising their right to free speech and foregoing benefits under the [treaty], or curtailing their speech and obtaining the benefits.” Id. at 511. It rea- soned that “this sort of dilemma patently transgresses the well-established principle that government may not condition the conferral of a benefit on the relinquishment of a constitutional right.” Id.
The Fifth Circuit recently considered, en banc, the constitutionality of a Texas law allowing charitable organ- izations to hold bingo games so long as the resulting funds were not used for lobbying. Dep’t of Tex., Veterans of Foreign Wars v. Tex. Lottery Comm’n , 760 F.3d 427, 430 (5th Cir. 2014) (en banc). The Texas Lottery Commission argued that the law’s restrictions were not unconstitu- tional because they fell within the state government’s spending power, which is analogous to the federal gov- ernment’s spending power. Id. at 434. The Fifth Circuit agreed that “the government may attach certain speech restrictions to funds linked to the public treasury—when either granting cash subsidies directly from the public coffers . . . or approving the withholding of funds that otherwise would go to the public treasury.” Id. at 435. However, the Fifth Circuit found the Texas bingo program “wholly distinguishable . . . because no public monies or ‘spending’ by the state are involved.” Id. at 436. The Fifth Circuit reasoned that the bingo program’s primary function is regulatory, further “underscor[ing] the incon- gruity of [applying] the ‘subsidy’ paradigm to the bingo program.” Id. at 437. The Fifth Circuit therefore applied the “unconstitutional conditions” doctrine to the bingo program, and found its lobbying provision unconstitution- al. Id. at 437–41.
The D.C. Circuit similarly held that a presidential di- rective barring lobbyists from serving on international trade advisory committees implicated the First Amend- ment. Autor v. Pritzker , 740 F.3d 176, 177 (D.C. Cir. 2014). The government argued that “when [it] appropri- ates public funds to establish a program, its decision not to use program funds to subsidize the exercise of a fun- damental right does not infringe.” Id. at 182 (quotations and alterations omitted). The D.C. Circuit rejected the government’s argument because membership in the advisory committees was a non-financial—albeit valua- ble—benefit. Id. at 182–83. It noted that advisory com- mittee members are not paid for their service, “absorbing even their out of pocket expenses.” Id. at 183. Because “[t]he Supreme Court has never extended the [spending exception] to situations not involving financial benefits,” the D.C. Circuit found the directive could be an unconsti- tutional condition, and remanded so the district court could consider the lobbyists’ claims further. Id. at 183– 84.
In another case, satellite carriers objected to the “must carry” provision in a federal law that granted satellite carriers a copyright license to retransmit local television stations in a given market so long as they also retransmitted all local television stations in that market upon request. Satellite Broad. & Commc’ns Ass’n v. FCC , 146 F. Supp. 2d 803, 808–09 (E.D. Va. 2001), aff’d , 275 F.3d 337 (4th Cir. 2001). The district court reasoned that Congress’ grant of a copyright license to satellite carriers did not arise from the Spending Clause (and therefore qualify as a “subsidy”) because “it [did] not entail the grant of government funds, or other benefits obtained through the use of government funds (i.e., property, government-created jobs, etc.), to confer a benefit.” Id. at 829. The court then considered the constitutionality of the “must carry” condition attached to the copyright license, and held the law constitutional both because it satisfied intermediate scrutiny and because, if a carrier opted not to accept the copyright license granted by the statute, it could still negotiate for the right to transmit the local stations. Id. at 830–31.
C. Applying the “Unconstitutional Conditions” Doctrine to Trademark Registration McGinley is the only case of ours to consider, if only briefly, the First Amendment implications of § 2(a). Since McGinley , a number of cases raised a First Amendment challenge to § 2(a), but in each case, the panel held itself bound by McGinley . See In re Boulevard Entm’t, Inc. , 334 F.3d 1336, 1343 (Fed. Cir. 2003); In re Mavety Media Grp. , 33 F.3d 1367, 1374 (Fed. Cir. 1994); In re Fox , 702 F.3d 633, 635 (Fed. Cir. 2012). Neither the court in McGinley nor any other court has analyzed § 2(a) under the “unconstitutional conditions” doctrine. This is error. Federal trademark registration confers valuable benefits, and under § 2(a), the government conditions those bene- fits on the applicants’ choice of a mark. Because the government denies benefits to applicants on the basis of their constitutionally protected speech, the “unconstitu- tional conditions” doctrine applies.
However, we are faced with a fundamental predicate question: does the “unconstitutional conditions” doctrine apply with full force in the context of trademark registra- tion, or is it tempered by virtue of Congress’ spending power? The benefits of trademark registration, while valuable, are not monetary. Unlike tangible property, a subsidy, or a tax exemption, bestowal of a trademark registration does not result in a direct loss of any property or money from the public fisc. Rather, a trademark redefines the nature of the markholder’s rights as against the rights of other citizens, depriving others of their rights to use the mark. Like the programs in Bullfrog and Texas Lottery Commission , the system of trademark registration is a regulatory regime, not a government subsidy pro- gram.
Furthermore, the act of registering a trademark does
not involve the federal treasury. In 1981, as noted by the
McGinley
court, trademark registration was “underwrit-
ten by public funds.”
While PTO operations are fully funded by registration
fees, some federal funds are nonetheless spent to facilitate
the registration and enforcement of trademarks. For
example, PTO employee benefits, which include pensions,
health insurance, and life insurance, are administered by
the Office of Personnel Management and funded from the
general treasury.
Figueroa
,
The purpose and nature of trademark registration support the conclusion that trademark registration is not a government-funded benefit. The Lanham Act derives from the Commerce Clause, not the Spending Clause, and its purpose is to regulate marks used in interstate com- merce—not to subsidize the markholders. 15 U.S.C. § 1127. Furthermore, it is the markholder, and not the government, that must spend money (on advertising using its mark) to obtain the benefits of trademark regis- tration. Registration of a trademark is not a federally funded financial benefit to the applicant.
McGinley was written only one year after Central Hudson and was decided against a background of law where the First Amendment had only recently begun to apply to commercial speech. Given the drastic changes since McGinley in constitutional jurisprudence and the PTO’s shift from a taxpayer-funded organization to a user-funded program, the McGinley court’s analysis of the constitutionality of § 2(a) of the Lanham Act no longer suffices. This analysis did not discuss the “unconstitu- tional conditions” doctrine, despite the doctrine’s clear relevance. And because trademark registration is no longer funded by the federal treasury, there is no longer any argument that trademark registration implicates Congress’ power to spend. To the contrary, the trademark registration scheme is a prototypical example of a regula- tory regime. As a result, the “unconstitutional conditions” doctrine applies. The government cannot hinge the benefits of federal trademark registration on constitu- tionally protected speech—here, the applicant’s selection of a suitable mark—unless the government’s actions pass constitutional scrutiny.
III. Is § 2(a) Unconstitutional?
A. Viewpoint Discriminatory Regulations
“Content-based regulations are presumptively inva-
lid.”
R.A.V.
,
Section 2(a) of the Lanham Act bars the registration of disparaging speech. Under this law, it is possible to register trademarks that refer to a certain group in a positive, or non-disparaging manner, but not trademarks that refer negatively to the same group. See R.A.V. , 505 U.S. at 391 (finding that an ordinance forbidding the use of “fighting words” that insulted “on the basis of race, color, creed, religion or gender” was viewpoint discrimina- tory because certain fighting words could be used only by those arguing in favor of tolerance, not their opponents). Section 2(a) discriminates against disparaging or offen- sive viewpoints. [2] Under this analysis, § 2(a) is presump- tively invalid, and must satisfy strict scrutiny to be found constitutional.
Although the Supreme Court has yet to decide wheth- er strict scrutiny attaches to restrictions on commercial speech that are viewpoint discriminatory, there is reason to believe it is an issue worth considering. Sorrell , 131 S. Ct. at 2664. This uncertainty is likely of no consequence, however, because it seems likely that section 2(a) cannot survive even the intermediate scrutiny that any re- striction on commercial speech receives under Central Hudson .
B.
Central Hudson
Test for Commercial Speech
In
Central Hudson
, the Supreme Court laid out the
framework for determining the constitutionality of re-
strictions on commercial speech.
First, we ask whether the regulated activity is lawful and not misleading. Id. at 563–64. There is nothing illegal about a disparaging trademark such as THE SLANTS, and Mr. Tam does not challenge the Lanham Act’s proscription on the registration of misleading marks. Disparaging trademarks satisfy the first prong of the Central Hudson framework.
acquire distinctiveness or secondary meaning. 15 U.S.C. § 1052(f). Once a laudatory or descriptive mark attains secondary meaning as a source identifier, such marks are eligible for registration; disparaging trademarks are never eligible for registration.
Next, for speech that is lawful and not misleading, a
substantial government interest independent of disap-
proving the speech’s message must justify the regulation.
Id.
at 566;
Sorrell
,
While the government may argue that it has an inter-
est in discouraging the use of disparaging marks that may
be offensive to persons, institutions, beliefs, or national
symbols, this is not a legitimate government interest.
See
Sorrell
, 131 S. Ct. at 2670. The Supreme Court has
“consistently held that the fact that protected speech may
be offensive to some does not justify its suppression.”
Bolger v. Youngs Drug Prods. Corp.
, 463 U.S. 60, 71
(1983). It is a “bedrock principle underlying the First
Amendment . . . that the Government may not prohibit
the expression of an idea simply because society finds the
idea itself offensive or disagreeable.”
United States v.
Eichman
,
Courts have attributed an additional government in-
terest to § 2(a), reasoning that it acts as “a judgment by
the Congress that such marks not occupy the time, ser-
vices, and use of funds of the federal government.”
See,
e.g.
,
McGinley
,
Finally, labeling this sort of interest as substantial would create an end-run around the “unconstitutional conditions” doctrine, as virtually all government benefits involve the time, services, or funds of the federal govern- ment. Nearly every benefit could be justified under this ground, no matter how minimal.
Another interest that has been proposed to justify
§ 2(a)’s ban on disparaging marks is the government’s
interest in maintaining a well-functioning trademark
system that harmonizes state and federal trademark law.
In enacting the Lanham Act, Congress codified a number
of long-standing common law trademark principles; the
argument posits that striking down § 2(a)’s bar on dispar-
aging marks would disrupt these principles. However,
this argument relies on the notion that § 2(a)’s bar on
disparaging marks is merely a codification of a common
law bar on disparaging marks. That is not the case.
While states have long refused to enforce vulgar or mis-
leading trademarks, there is no similar history of a bar on
disparaging marks. In drafting § 2(a)’s bar on disparag-
ing marks, Congress was creating new law, not codifying
clear and established principles.
See Univ. of Notre Dame
Du Lac v. J.C. Gourmet Food Imports Co.
,
Trademarks—which are applied to private goods to identify the source of the goods for consumers—are pri- vate speech, not “government speech.” Cf. Pleasant Grove City v. Summum , 555 U.S. 460, 467 (2009) (“The Free Speech Clause restricts government regulation of private speech; it does not regulate government speech.”). Alt- hough the government publishes registered trademarks in the Trademark Principal Register, it does so not to com- municate a particular message or select a particular viewpoint; rather, it publishes trademarks to provide notice that a mark has been registered. Despite this, supporters of § 2(a) have claimed that the government has an interest in not being seen to give a stamp of approval, imprimatur, to scandalous and disparaging terms. For this interest to be substantial, the public must believe that trademarks carry the stamp of government approval. The U.S. government recently explained that “‘issuance of a trademark registration’ does not ‘amount[] to the award- ing of the U.S. Government’s ‘imprimatur.’” Brief of United States at 21, Pro-Football, Inc. v. Blackhorse , No. 14-cv-1043 (GBL/IDD) (E.D. Va. Mar. 23, 2015), ECF No. 109 (quoting In re Old Glory Condom Corp. , 26 U.S.P.Q.2d 1216, 1219–20 n.3 (TTAB Mar. 3, 1993) (al- terations in original)). As the Trademark Trial and Appeal Board wrote:
The duty of this Office . . . in reviewing applica- tions for registration is nothing more and nothing less than to register those marks that are func- tioning to identify and distinguish goods and ser- vices in the marketplace . . . . Just as the issuance of a trademark registration by this Office does not amount to a government endorsement of the qual- ity of the goods to which the mark is applied, the act of registration is not a government imprimatur or pronouncement that the mark is a “good” one in an aesthetic, or any analogous, sense.
Old Glory Condom Corp. , 26 U.S.P.Q.2d at 1219–20 n.3 (emphasis added). The public is not likely to believe that a registered trademark conveys the imprimatur of the government. The trademark is printed on private proper- ty, in fact commercial goods, not on any government property. The purpose served by trademarks, to identify the source of the goods, is antithetical to the notion that the trademark is tied to the government.
We have yet to be presented with any substantial government interests that would justify the PTO’s refusal to register disparaging marks. Without this, § 2(a) cannot satisfy the Central Hudson test. It is time to revisit the holding in McGinley in light of subsequent developments in the law and the trademark registration funding re- gime.
Notes
[1]
See, e.g.
,
Ritchie v. Simpson
,
[2] It is incorrect to imply that the Lanham Act treats “laudatory” and disparaging trademarks the same. The Lanham Act always prohibits registration of disparaging marks. In contrast, the Lanham Acts prohibits the regis- tration of “merely descriptive” marks unless or until they
[3] Disapproval of the message is also the apparent
basis for denying under § 2(a) the registration of many
“scandalous” marks that are not obscene.
See, e.g.
,
In re
Fox
, 702 F.3d 633 (Fed. Cir. 2012) (affirming rejection of
COCK SUCKER for chocolate rooster lollipops);
In re
Boulevard Entm’t, Inc.
, 334 F.3d 1336 (Fed. Cir. 2003)
(affirming rejection of 1-800-JACK-OFF and JACK-OFF
for adult entertainment services over telephone);
In re
Betty Bangs, LLC
,