Cecelia Chang is the director of litigation at Asian Americans Advancing Justice—AAJC. Daniel Kornstein is a partner at Emery Celli Brinckerhoff & Abady LLP.

The debate over trademark rights and free speech has a long history. We shouldn’t forget it now, when trademark registration has become a First Amendment flashpoint. Trademark protection can promote expression, but it can also chill speech and debate. The dual nature of trademark means that sometimes limiting trademark rights – for example, by declining to register disparaging marks – actually advances First Amendment goals by curtailing private control over contested vocabulary and imagery.

In early trademark cases, courts understood that trademark claims were a form of commercial appropriation of language. Judges were accordingly skeptical about allowing private businesses to assert exclusive rights to words or phrases. Limiting expansive trademark claims was a way of keeping language in the public domain. As one court explained in 1883, the English language is “the common property of mankind,” belonging to all of us in “equal share.” Since those early days, doubts about the social benefit of robust trademark protection have faded. But the debate over who should “own” trademarked words and symbols, and to what degree, remains as relevant as ever.

In Lee v. Tam, the Supreme Court will consider a request by Simon Tam, an activist and the founder of an Asian rock band, to register his band’s name, “THE SLANTS,” as a federally protected trademark. The dispute in this case centers on a relatively obscure provision of the federal trademark statute, which denies registration to marks that “may disparage” individuals, institutions, beliefs or national symbols. Tam contends that his band’s name challenges stigmatizing stereotypes, but the U.S. Patent and Trademark Office denied registration after finding THE SLANTS disparaging to people of Asian ancestry. To Tam, the result is unconstitutional viewpoint discrimination and suppression of speech – all the more harmful and arbitrary because of his record of political activism and advocacy on behalf of Asian-American groups.

Tam’s case is highly unusual. As Asian-American groups pointed out in their “friend of the court” brief, personal support for Tam shouldn’t blind us to the commercial realities of trademarks. By choosing THE SLANTS as a band name, Tam asserts he is following the progressive tradition of reappropriation, whereby members of minority groups reclaim slurs and epithets and turn the insults into badges of pride. But associating trademark protection with reappropriation is a confounding way to reconcile trademark rights and speech interests. Cultural reappropriation efforts have rarely – if ever – succeeded because activists sought trademark rights for disparaging words. Instead, the overwhelming purpose of federal trademark registration is commerce, unrelated to any high-minded expressive goal.

To understand what’s at stake and why opening registration to disparaging marks is no victory for free speech or political activism, consider the related litigation involving the Washington Redskins football team. After years of opposition, Native American groups succeeded in cancelling federal registration of the team’s trademarks as disparaging to Native Americans. For timing and procedural reasons, Tam’s case reached the Supreme Court first. But, like Tam, the team also claims it has an absolute First Amendment right to federal trademark protection.

Instead of reclaiming stereotypes, though, the team uses the benefits of federal registration to market merchandise like Redskins “Insider thongs,” women’s thong underwear emblazoned with the team’s Indian chief logo, which the team promotes as an ideal way to “have a little bit of your Washington Redskins at the ready whenever you need a boost of team spirit!” And if that design isn’t appealing, no worries. The team offers a full assortment of intimate apparel options – all displaying the same logo.

For every progressive musician like Tam, there are far more businesses like the Washington Redskins, and their profit incentives drive how trademarks work in the world. Before accepting that federal registration advances First Amendment goals, we should remember that trademark protection is a form of controlling words and meaning, not maximizing speech. In the idealized First Amendment marketplace of ideas, the first speaker has no privilege or veto power and no ability to appropriate language or meaning. But that’s exactly how trademark protection operates: The senior mark user has priority in appropriating the mark. And federal registration enhances that priority by arming mark owners with additional tools to enforce rights of exclusive use nationwide.

As we explained in our brief, trademark enforcement is not simply benign and neutral commerce. It is also a powerful means for businesses and other parties to silence expression they disagree with, or which they view as harmful to commercial or political interests. Our brief describes efforts by the University of North Dakota to stop a student activist from protesting the university’s Fighting Sioux logo. Political protest is also vulnerable to trademark claims. Last year, Donald Trump’s presidential campaign threatened the website StopTrump.us, which sold t-shirts and other merchandise protesting and satirizing Trump, with a lawsuit for allegedly infringing the federally registered TRUMP trademark.

To be sure, there may be strong defenses when trademark is invoked to quell criticism and protest. But there is ample reason to worry about the chilling effect of aggressive trademark enforcement nonetheless. Much enforcement happens outside the courtroom through cease-and-desist letters and take-down notices that can intimidate parties into self-censorship, particularly artists and activists without the resources to fight large corporations and well-financed businesses.

For dissenting voices, testing speech rights when crucial word and symbols have been claimed by trademark holders is both costly and uncertain. According to recent surveys, the average cost of litigating even a low-stakes infringement action is nearly $500,000. And because trademark law was not developed with expressive use in mind, the scope of available speech-based defenses is unclear. For example, there is a pending petition for certiorari, filed with the support of the International Trademark Association, which urges the court to determine the scope of the nominative fair-use defense, which applies to commentary and criticism referring to registered trademarks. If trademark experts are confused about immunity for fair use, and the courts of appeals apply conflicting tests, then it’s hardly reasonable to expect artists, activists and other individuals to be confident in their freedom to engage in protest and critique involving registered marks.

Understanding trademark in context helps explain why limits on federal registration can protect speech, and why Tam’s reappropriation arguments support denying registration to disparaging marks. The linguistic battlefield over reclaiming insults and terms of abuse depends on minority and disenfranchised groups having equal access to – and the right to reuse and repurpose – stigmatizing language and imagery. Upholding a constitutional right to register disparaging marks endangers those interests. It would enable businesses to commercially appropriate derogatory words and symbols and invoke the powerful tools of federal trademark law to chill redefinition of the same words and symbols by minority groups.

In Cohen v. California, the Supreme Court warned that the First Amendment forbids the government from removing offensive words “from the public vocabulary.” That principle is important whether the disputed words are offensive because of vulgarity or disparagement. For trademark purposes, it’s possible to understand the federal disparagement bar as protecting “the public vocabulary” by refusing government aid for private ownership and control of disparaging marks. Rather than penalizing speech, denial of federal registration may preserve it by keeping the most offensive and stigmatizing marks in the public domain and open to communal debate and dispute.

In the early days of trademark enforcement, courts were concerned that private parties could claim first dibs on commonly shared language. That prospect should still concern us now, especially when the argument is that the First Amendment somehow compels aiding businesses in enforcing a monopoly on words and symbols that are harmful and insulting to others. Before constitutionalizing trademark protection, the court has the option of updating the existing disparagement inquiry to consider Tam’s asserted interest in reappropriation, a narrow remedy that fits Tam’s limited and unique case. Although line-drawing is challenging when speech is at issue, there should be constitutional room to frame a trademark-disparagement test that can distinguish between a progressive musician like Tam with a band name that references his racial identity and a billion-dollar NFL franchise like the Washington Redskins, peddling 2-packs of logoed thong underwear.

Posted in Lee v. Tam, Symposium before the oral argument in Lee v. Tam, Featured

Recommended Citation: Cecelia Chang and Daniel Kornstein, Symposium: A free speech argument against registering disparaging trademarks, SCOTUSblog (Dec. 21, 2016, 10:42 AM), http://www.scotusblog.com/2016/12/symposium-free-speech-argument-registering-disparaging-trademarks/