Registration symposium at William & Mary, part 2

Rebecca Tushnet: And
now for something different!  I’ve been
asked to speak about the implications of the Pro-Football case and decisions
made by the courts with regards to the trademark process and freedom of speech.  Thanks to Fred Schauer and Mark Tushnet for
illuminating discussions, and to William & Mary students for the
opportunity to talk about these important issues. I’ve been trying to work
through them and I caution that my conclusions are necessarily tentative at
this point.
 
All or almost all of
the §2 bars are also reasons that the courts will refuse to protect a claimed
trademark under §43 of the Lanham Act, which provides trademark protection for
unregistered marks.  These reasons
include: the claimed matter is functional, meaning it affects the cost or
quality of the product or service; the claimed matter is merely descriptive, meaning
that consumers don’t understand that it indicates source and instead think that
it just describes some characteristic of the product; the claimed matter is
deceptively misdescriptive, which is like descriptiveness except not true; the
claimed matter is deceptive; the claimed matter is confusingly similar to an
existing registered mark or mark in use in the US; the claimed matter is the
name, photo or signature of a living person and there’s no written consent from
that person to register the mark; the claimed matter is the flag or insignia of
a nation or state or other US political subdivision; the claimed matter creates
a false association with people or institutions; and last but not least, the
claimed matter is scandalous, immoral, or disparaging.
 
The constitutionality
of § 2(a) is now in question because of some high-profile cases.  From the First Amendment side, we have Reed v. Town of Gilbert: last Term’s
sign case in which the Supreme Court struck down a city’s sign regulations on
the theory that they were content-based and didn’t survive strict
scrutiny.  The rule suggested, though
it’s not clear whether it will actually apply this broadly, is that all state
regulations of speech that depend on an evaluation of the content of the speech
to determine whether the regulation has been violated are content-based and
must survive strict scrutiny.  Section 2(a)
is nothing but content-based (with a possible exception to be discussed in a
bit). 
 
Meanwhile, we have
the cases Professor Farley discussed, so the collision with trademark law seems
imminent.  It’s possible to argue that
trademark is a First Amendment-free zone, as copyright basically is except for
the internal restraints of the fact/expression division and fair use, but that
argument seems unlikely to prevail as easily with trademark and trademark
registration, neither of which are mentioned in the Constitution and the latter
of which confers rights unknown at common law.
 
A brief review of
the justifications usually given for the exclusions for marks that are scandalous
or disparaging: (1) the harm done by the government endorsement represented by
a registration; (2) the desire to withhold government resources from
disparaging or scandalous terms; (3) the lack of any effect on a user’s ability or right to use the mark, with (a) possible §43(a) or state common law
protection against confusing uses despite unregistrability, though this is not
at all certain, or (b) even if there’s no protection against confusing uses by
other people, there’s still nothing stopping anyone from using a disparaging
term on a T-shirt (at least if they’re not going to a public school) and thus
there is no government harm inflicted on them. 
 
Justification (1) very
much depends on public understanding. 
Confederate Veterans license plate case from last Term allowed a state
government to decline to approve a Confederate Veterans logo for personalized
license plates even though it approved a large number of other specialized
license plates.  The Court ruled that the
plate design constituted governmental speech, and thus the government was not
bound to neutrality in its decisions.
 
If registration is
the government’s agreement that a term is appropriate for federal registration,
equivalent to the government’s agreement that a term is appropriate for
placement on a license plate, then there is no problem with refusing the
registration. This is the reasoning recently adopted by the district judge
deciding the Washington football team’s case. 
But do people actually understand the difference between the ® symbol, the
TM symbol, and nothing?  The Supreme
Court didn’t exactly look for empirical evidence in the Confederate Veterans
case!  The dissent argued that, given how
many different license plates are approved, no one could reasonably perceive a
government endorsement; that’s even more true for trademark registrations—the government
couldn’t possibly be both an Apple Mac and a Windows PC, or a UVa alum and a
William & Mary alum.  But that’s
oversimplifying—the government could
express an opinion about what the boundaries of tolerable public discourse are;
allowing a particular plate, or a particular mark, expresses only the opinion
that it’s tolerable, without saying that it’s correct.
 
There’s a related
body of law of some possible relevance: the establishment clause cases, in
which Justice O’Connor developed a line of reasoning that the question of
whether government endorsed religion with some action had to be assessed from
an objective perspective, assuming a person with reasonable levels of
historical knowledge/understanding. 
Anyone to whom the difference between registration and trademark
protection is explained can usually grasp it very easily. Given that fact, by
analogy §2(a) is if anything an easier case than Confederate Veterans.
 
Justification (2) doesn’t
work, because it takes a lot of resources to enforce §2(a).  Also, if §43(a) remains available, then government
resources are still being devoted to protecting such marks, perhaps even more resources, insofar as there is no
more presumption of validity under §43 as there is for a registered mark and
therefore an inquiry into protectability must be made in each case.
 
Justification (3) is
the most interesting to me.  (3)(a) is
unsatisfying to anyone.  There are
significant differences between the benefits of registered and unregistered
marks—nationwide scope, presumption of validity/incontestability after 5 years,
the ability to use a US registration to secure rights under foreign
registration systems, the ability to invoke counterfeiting laws.  If that harm is acceptable, then it should
also be acceptable to impose the further harm of not providing any protection
against confusing uses at all.  So, to
me, this reduces to a question of unconstitutional conditions: does the government
violate the First Amendment by refusing to protect certain marks because of
their content?
 
And asked that way,
it’s clear this challenge opens up numerous cans of worms.  All of the exclusions in §2 are
content-based.  Let’s assume they only
operate on commercial speech (though this is not necessarily true).  Full understanding now requires a brief
excursion into commercial speech doctrine, the centerpiece of which is the Central Hudson rule. Under Central Hudson, false or misleading
commercial speech may be banned. 
Regulations of truthful, nonmisleading commercial speech, however, must actually
serve a substantial government interest and be no more restrictive than
necessary to serve that interest, though this is not a requirement to use the
least restrictive alternative.
 
Assuming that §2
only operates on commercial speech, then, we still face a division between
false/misleading speech and other commercial speech.  Since false and misleading commercial speech
can just be banned, there’s no doubt that the government can refuse to support
it.  Bans on other commercial speech must
survive Central Hudson. But
wait!  There’s also mandatory disclosure
law.  If the government is not suppressing commercial speech, but
rather requiring disclosures, the Zauderer
line of cases becomes relevant.  Zauderer involved attorney advertising
that told laypeople that if the lawyer lost their case, there’d be no fee.  The Supreme Court held that the state could
require an additional disclosure
clarifying that fees and costs were different things and that, if they lost,
they’d still be liable for costs. The Court did not require the mandatory
disclosure to satisfy Central Hudson,
but applied something like rational basis review—as long as the required disclosure
was truthful and noncontroversial, and not unduly burdensome, it was
constitutional.
 
A refusal to provide
trademark protection is arguably much more like requiring disclosures—it may
create an economic burden and thus a possible disincentive for the speech, but
it doesn’t suppress that speech directly—than like a direct ban. However, lower
courts are not in agreement about whether Zauderer
only applies when the government is requiring disclosures to correct
misinformation, versus when it is requiring disclosures to provide useful
information. 
 
Take the broad view
of Zauderer—such burdens on
commercial speech are allowed when the government is requiring disclosure of
truthful, noncontroversial information that isn’t unduly burdensome, even
though it is targeting particular content for the required disclosure.  Do the 2(a) bars look anything like that? 
 
(1) Is the government
determination about being scandalous/disparaging truthful and
noncontroversial?  A weak point—this may
not be an answerable question.  There is
probably some reasonably objective truth about whether a substantial proportion
of the general public, or the targeted group, finds the mark outrageous or
disparaging, respectively.  If we are
confident in the PTO’s factfinding ability, then at least some scandalousness
and disparagement determinations—say, the c-word and the n-word—are probably
truthful and noncontroversial.  Since
failure to protect isn’t itself a disclosure, it might not need to be
noncontroversial—the Court’s concern seems to have been for forcing commercial
speakers to put out ideological messages they didn’t agree with.  That concern would be completely irrelevant
for a refusal to register.  But what it
means for a determination to be noncontroversial is, of course, itself highly
contestable.  The very fact of a
litigated challenge might seem to suggest that a disclosure—or a bar to
registration—is controversial; the Supreme Court has not been very helpful in
identifying what it meant by that term. 
 
(2) Even if we find
a disparagement determination to be truthful and noncontroversial, is it unduly
burdensome to deny TM registration or, in its entirety, TM protection?  I don’t think this Q can be answered except
normatively—this isn’t like a disclosure that takes three minutes to recite
when most ads are only 30 seconds long. 
(3) Suppose we decide that we do need to get rid of scandalousness/disparagement
registration bars because they don’t meet a Zauderer-like
standard.  What of the remaining
exclusions? This question can be fruitfully grouped with the next issue:
 
Take the narrow view
of Zauderer—such burdens are only
allowed when there’s some relationship to preventing deception.  Once we thereby get rid of
scandalousness/disparagement, there are other §2 bars whose constitutionality
remains to be addressed. 
 
(1) Which are at
least arguably related to consumer deception? 
Well, deceptive marks, pretty obviously—though the fact that refusing
registration doesn’t stop the use of
the mark to deceive people might be a problem of insufficient tailoring.  Marks that create a false association with
persons, institutions, etc. Geographically deceptively misdescriptive marks,
ok.  Name, picture, or signature of a
living person (or president whose widow or widower still lives) without written
consent, seems ok as a legislative prediction at the wholesale level about the
risk of false endorsement.  Even the bar
on registering flags and other indicia of states, nations, and other political
units arguably has some relationship to preventing deception in that this is a
subclass of signifiers whose potential for abuse is so great that Congress
could legitimately make a blanket rule without requiring case by case
evaluation.
 
(2) What about those
§2 bars related to consumer understanding, but not so much to deception?  For example, merely descriptive (or
deceptively misdescriptive, or geographically misdescriptive) marks are not deceptive when a TM claimant uses them.
But there are policy reasons we want other
producers to be free to use them as well. 
Claimants could cause harm to the marketplace by gaining monopoly rights
over them.  Is that enough of a
justification to sustain these bars, given that they are content discriminatory
by our excitingly broad definition of content discrimination?  To me, the fact that the acid logic of
current First Amendment protection makes the bar on registering merely
descriptive terms seem even arguably questionable shows that something has gone
seriously wrong with the Supreme Court’s condemnation of content-based
regulation, which has now become detached from the underlying justifications
that one might reasonably give for worrying about content-based
regulation. 
 
Sure, we could say that the bar on registering
descriptive terms survives strict scrutiny, but I don’t see how that can be
true without doing serious damage to the concept of strict scrutiny.  For example, we already have a less restrictive
alternative than barring registration in the very same statute: we could allow
registration of descriptive marks, and give everyone else a descriptive fair
use defense, just as we do now when a descriptive term has secondary meaning
and is registrable.  Of course, having the descriptive fair use
defense is not as good for competitors as full freedom to use a descriptive
term lacking secondary meaning—but is that marginal difference enough to
survive full First Amendment scrutiny?  At
a minimum, the difficulties with this approach indicate that, if Zauderer-like scrutiny should apply to
refusals to register, it should be the broad version of Zauderer, allowing the government to pursue non-deception-related
objectives, though which such objectives are independently constitutional can
still be debated.
 
Side note: another
constitutional jurisprudence could use the fact that a trademark confers some
private right to suppress other people’s speech as a reason that the government
can make balancing decisions about whom to favor—that is, whatever rule the
government makes will affect the speech environment, so saying that each rule
has to survive strict scrutiny doesn’t make much sense.  Unfortunately, that’s a tough argument to
make in our current constitutional order, which tends to assume the existence
of particular baselines, such as that the government will protect trademarks.
 
(3) What about
functionality as a bar to registration/protectability?  This is a fascinating issue because it is a
pure U.S. v. O’Brien situation: by
definition, a symbol that is functioning as a mark, but also possesses
utilitarian or aesthetic functionality, is not barred from
registration/protection because of anything about its communicative status.  It is
barred because of the things that it does that aren’t communicative at all,
just as the government supposedly punished O’Brien for burning his draft card
not because of his anti-war message but because it needed that draft card for
other purposes.  Unlike O’Brien itself, there’s absolutely no
reason to disbelieve the government’s content-indifferent rationale for its
regulation.  With functionality, the government
here is regulating conduct (preserving everyone else’s freedom to use a
functional feature) and not speech. 
Nonetheless the government rule has effects
on speech—it discourages the communicative use of functional features, because
you can’t get protection for them.  Under
O’Brien, a law that burdens
expressive conduct is unconstitutional, even absent any bad state purposes,
unless “it furthers an important or substantial governmental interest; and the
incidental restriction on alleged First Amendment freedoms is no greater than
is essential to the furtherance of that interest.”
 
In some sense the
exclusion for functional matter is motivated by the government’s desire to
shape the universe of communicative devices so that it doesn’t overlap with the
universe of functional features.  The
thing is, there’s just nothing wrong with that desire even if characterized as
speech-related—this is why Justice Breyer and the Justices in agreement with
him are absolutely right that the term “content-based” as recently used in Reed is ridiculously, preposterously,
unsustainably overbroad.  The government
interest is substantial and the restriction is exactly coterminous with the government
interest.  So let’s conclude that at
least functionality would survive Central
Hudson
scrutiny both as a bar to registration and as a total bar to
protection.
 
Go back then to the category
of descriptive terms lacking secondary meaning. 
Can government deny protection to those? 
Denying trademark protection to such terms doesn’t directly protect
consumers from deception, though it may indirectly prevent them from being
fooled by the absence of information
from other producers who also want to use those descriptive terms. 
 
So, may the government
condition the benefit of trademark protection on a claimant’s speech-related choices,
here what kind of word to use? One answer: yes, if the condition is related to
the purpose of the program.  Here, one
core purpose of trademark is to connect nonfunctional terms to particular
producers so consumers can use them as indicators of source.  A descriptive term without secondary meaning
doesn’t do that, so a producer who uses such a term can be excluded from the government
program.
 
But is the only
permissible purpose of the program to improve the quality of truthful or
nondeceptive signals that consumers receive? 
Can our concept of “quality” consider the harm done to significant
segments of the population by having disparaging or scandalous terms
commercialized?
 
I have to admit that
unconstitutional conditions doctrine is a big hairball.[1]  There are huge problems of determining what
counts as coercion, or as the appropriate baseline from which to measure your
entitlement.  Kathleen M. Sullivan,
Unconstitutional Conditions, 102 Harv. L. Rev. 1413 (1989): “[D]eciding under
what circumstances government offers, like private offers, are coercive is an
inevitably normative inquiry.” 
 
Nonetheless I want
to argue that the §2(a) exclusions, all of them, do not represent
unconstitutional conditions.  And the
reason is something peculiar to trademarks: trademarks can communicate (at
least) two different things—but the only thing the government protects as a trademark is the communication
“this symbol stands for a particular producer.” 
Under §2(a), any speaker can continue to use any symbol it wants, but it
can only get a registration for matter
that does not run afoul of any exclusion—for the Redskins, the team colors and
logo. 
 
Friedman v. Rogers,
440 U.S. 1, 12 (1979), says that trademarks have “no intrinsic meaning” and
thus that there’s no First Amendment problem with the government barring
certain marks for fear they might be deceptive. 
From a trademark lawyer’s perspective this might be a puzzling or even
contradictory statement, but one way to read what the Court is saying is that
the source indication function of trademark is not the communication that is
protected in commercial speech.  As
source indicator, a mark is neither truthful nor untruthful in advance of legally
enforceable meaning, and—unlike ordinary communication, where changing the
words can change the meaning, as the “Fuck the Draft” case Cohen v. California
teaches us—a change of mark does not change what is communicated by the
trademark function: this is who I am/this is my source.  Google is
Alphabet.
 
Unlike the clinics
in Rust v. Sullivan, a case in which
the Court found that it wasn’t an
unconstitutional condition to require any health clinic that took federal money
to separate abortion related information and activities from the part of the
clinic funded by the government,[2]
a speaker doesn’t even h ave to separate its activities to take advantage of
the TM registration system. 
 
To analogize
to the Confederate Veterans case, as with the license plate, the speaker’s free
to put a confederate flag bumper sticker on his bumper; he just can’t have it
on the license plate. Washington’s football team can keep its name and continue
to get the government’s help suppressing counterfeits etc. It just can’t get
the government’s help using only this particular disparaging symbol.  If the whole car is our unit of analysis,
like the whole product or service offered by the producer, then the government’s
unwillingness to implicate itself in the disparaging or racist aspects of the message
communicated by the car or the product may be itself a sufficient interest to
justify the exclusion, given that the government is not gaining any leverage
over the message appearing outside the license plate or registered matter.[3]
A number of cases
and commentators have suggested germaneness to the program’s aims as a standard
for determining whether a condition is unconstitutional: you can be denied TANF
because you are making too much money, but not because you protested the government—germaneness
here, though, reduces to the question of whether it’s ok for the government to
have this preference for nondisparaging marks. 
I think there’s no question that denying Washington’s football team any trademark rights in any symbol as long as it also used the
team name would be a penalty for the exercise of First Amendment rights.[4]
 
Moreover, viewpoint
discrimination can be illegitimate in many more instances than content
discrimination—my theory doesn’t license Congress to grant trademarks only to
Republicans.  But: Would my reasoning
license Congress to eliminate any trademarks that were themselves pro-choice?  Viewpoint discrimination can violate the
First Amendment even if the underlying activity isn’t protected by the First
Amendment—RAV v. City of St. Paul teaches that you can’t decide that assaults
against Republicans because they are Republicans will be subject to harsher
punishment, or that only false advertising that degrades men will be banned.[5]
 
Conclusion: Once a
program is exposed to the modern First Amendment in its rawest form, that
program may have difficulty surviving, no matter how sensible it is.  This is either a problem with First Amendment
doctrine—or it’s a problem with the modern rejection of Lochner.  If we are really
that suspicious of government regulation picking winners and losers, then we
shouldn’t even have registration—and maybe not infringement cases!  Or, my preferred response, we should rethink
the corrosiveness of First Amendment doctrine applied to ordinary economic
regulations.  In some ways, whether §2(a)’s
ban on disparaging marks survives constitutional scrutiny is only a small part
of that broader issue.  There remains the
possibility of continued ad hoc-ism, where the Court applies its strict
scrutiny only to the parts of a system that protect less politically powerful
groups, as is its trend with campaign finance and affirmative action.  But that would be the worst result of all.
 
Brooke: Is TM
property?  © and patent are in the
constitution.  It’s not really property,
but represents goodwill. You can pledge TM registrations to a bank and pledge
them as security for a loan; Ford pledged all its TM registrations to
financiers to avoid bankruptcy.  Ambiguity
as to whether it’s property.  The gov’t
is picking winners and losers.  Doesn’t
think Court will hold 2(a) unconstitutional, but we need a working system. 
 
Allen: Personally,
agrees that registration is an affirmation/presumption of validity that there
is some weight behind the mark.  Not just
something that the applicant takes home but can use abroad. 
 
Heymann: is there
any approval of the message in a registration?
 
Allen: Yes, in the
sense that it affirms that it survived §2.
 
Farley: That’s the
question of the day! Going to other gov’ts saying that this gov’t has approved
the mark. Most countries have this kind of prohibition, usually phrased as
public order or morality.  It is the US
saying “this message is ok”—whether it’s “using LEATHER on these products is
nondeceptive” or something else.  Fed.
Cir. was interested in whether CO could bar protection of pornography under
this rationale.
 
RT: Depends on your
theory of the 1A.  I think the answer
could be yes, but there is nonetheless a big distinction between © and TM.  Because TM is about protecting a source link,
the Washington team can have the unregistrable word present on everything that
is protected by its rights in the team colors and logo. By contrast, a work
refused © because it was pornographic would have to change its content to gain
protection.  So you could easily
invalidate such restrictions on © while still sustaining §2.
 
Heymann: questions
of evidence.  If there are a bunch of
actually disparaging marks on the register because the targets don’t have the
resources to challenge, is that a problem?
 
Brooke: we’re
supposed to care about consumers/protecting consumers, not if Ford is trying to
protect its property.  Many of these marks
will fail/be taken care of by the market. 
People can choose to be offended or not.
 
Farley: the market
won’t fix everything; if we trust the market on that, why not trust it on
everything else the TM act is concerned with? 
If the issue is connecting the gov’t w/the ® of a disparaging term
today, then the rule should be that we assess its meaning today.  [That creates some real problems for my
constitutional analysis, since that would mean there are untrademarkable goods
& services, like the Amos & Andy works, or OJ Simpson: any time the
public starts to associate the mark with the underlying offensive
goods/services, then that mark would be disparaging/scandalous too.]
 
Problem with
evidence: PTO relied on blog saying Slants were rejected for their name, but
Slants say that’s not true; blog was mistaken in its facts.  The limited evidence available to the PTO
creates some risks.
 
Brooke: Market
pressure often takes care of this: Sambo’s restaurants have been
abandoned.  If Dan Snyder had been smart,
this would have been taken care of a long time ago.
 
Q: is original
justification just to prevent bad marks from being in the marketplace?
Scandalousness/disparagement doesn’t seem like consumer protection.
 
A: But that’s not
the only justification for TM: ordering producer relations. Incontestability
has nothing to do w/consumer protection, for example.  Also, historically, disparagement was first
before false association—it may well be unconstitutional the way old defamation
law was, but it’s deeply embedded in the existing scheme.
 
Farley: Flag
prohibition could be back-justified as deception based, but legislative history
is about diplomacy; likewise presidential name prohibition is dignity-based in
stated historical justification. 
 
Brooke: would never
say that Lanham Act is other than consumer protection in federal court, as a
practicing attorney.  If you’re
litigating a case, you better be talking about consumers.
 
Heymann: prediction
about In re Tam?
 
Farley: court was
arguing with itself, passionately.  The
fact they’d have to overturn precedent, plus questions about what exactly they’d
be invalidating—disparagement, false association, scandalous, descriptive—is something
they’d have a hard time wrestling with. Fed. Cir. doesn’t want to undo all of
TM law, which might be enough to convince a majority to affirm.
 
Brooke: would
probably have said SCt would find it unconstitutional before Confederate Veterans, but now thinks
they’ll defer to gov’t agency.
 
 


[1]
Mitchell N. Berman, Coercion Without Baselines: Unconstitutional Conditions in
Three Dimensions, 90 Geo. L.J. 1 (2001) (“The Supreme Court’s failure to
provide coherent guidance on the subject is, alas, legendary.”) (footnote
omitted); Cass R. Sunstein, Why the Unconstitutional Conditions Doctrine Is an
Anachronism (With Particular Reference to Religion, Speech, and Abortion), 70
B.U. L. Rev. 593 (1990).
[2]
Rust v. Sullivan (“[A] refusal to fund protected activity, without more, cannot
be equated with the imposition of a ‘penalty’ on that activity.”).
[3]
Cf. Sunstein, supra (“In the spending context, the government may be able to
invoke justifications that are tightly connected to, and become legitimate
because of, the very fact that it is engaging in those activities. In the public
school setting, for example, government can plausibly justify its selectivity
by the need to ensure that public funds are not spent on religious
activities.”).
[4]
Compare Rust v. Sullivan (discussing hypothetical withdrawal of all benefits
from any woman who chose abortion).
[5]
Cf. Sunstein, supra (arguing that government funding choices on aesthetic,
qualitative, and content-based grounds are all acceptable and distinguishable
from viewpoint-based discrimination).

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