Free Speech & Disparaging Trademarks

Abstract

Speech law has silenced trademark. In In re Tam, the Federal Circuit ruled that the First Amendment requires Congress to grant trademark protection for disparaging speech. More specifically, the Federal Circuit held unconstitutional the provision of the Federal Lanham Act that denies trademark protection for marks that disparage. The Federal Circuit’s ruling, however, is not the final word on the issue. The Supreme Court has agreed to hear the Tam case. This Article argues against the Federal Circuit decision. As illustrated by the five different opinions from the en banc panel, the complexities of speech law easily lead to disparate conclusions, any one of which may seem reasonable. Yet if there is one principle of speech law that is certain, it is this: context is dispositive. The context of trademark law is particularly nuanced, so a failure to account for that context easily produces inconsistencies in the application of speech law’s doctrine and policy. Tellingly, none of the Federal Circuit’s five opinions consider the context of trademark law. None consider whether the majority’s holding is consistent with trademark’s most fundamental doctrines. None recognize that trademark law imposes other content-based criteria as conditions for protection, and has done so for over a century. The Tam majority merely applied speech law to the narrow provision under consideration, failing to account for the broader context of trademark law. This Article provides that context. The Article concludes that the context of trademark law implies the constitutionality of the Lanham Act’s anti-disparagement provision.

Keywords: trademark, speech, registration, disparagement