Matal v. Tam Decided!

It's funny: now that I'm out of law school, I enjoy reading Supreme Court cases.      

Anyway, the day of reckoning is finally upon us. Matal v. Tam (formerly Lee v. Tam) has just been decided by the Supreme Court of the United States: the disparagement clause of the Lanham Act, 15 U.S.C. § 1052(a), is unconstitutional under the Free Speech Clause of the First Amendment. I’m not too surprised by this outcome and, personally, I think the Court came to the right decision.

First, by way of background for those who aren’t familiar with this case, The Slants are an all Asian-American dance rock band based in Portland, Oregon. Their name is partially derived from the anti-Asian slur referring to the shape of their eyes. Simon Tam, the founder and bassist for the band, applied to register the “The Slants” at the U.S. Patent and Trademark Office. The examining attorney refused to register the mark on the basis that it disparaged Asian people in violation of section 2(a). Tam appealed to the Trademark Trial and Appeal Board, which affirmed the decision of the examining attorney. Tam further appealed to the U.S. Court of Appeals for the Federal Circuit, which heard the case en banc, meaning that the entire court heard the case, rather than the three-judge panel typical of hearings before U.S. Courts of Appeals. The Federal Circuit ruled in Tam’s favor, finding that the disparagement clause is unconstitutional under the Free Speech Clause of the First Amendment. Finally, then-Director of the USPTO, Michelle Lee, petitioned the Supreme Court, and the Court granted cert.

In short, the Supreme Court agreed that the disparagement clause is unconstitutional because it isn’t “viewpoint-neutral.” The Courts are very reluctant to uphold a law that restricts speech based on its content. This includes laws that favor or discourage a particular viewpoint. In Tam’s case, the Court concluded that “The Slants” and similar offensive or hateful language is a viewpoint, and by refusing to register it, the government took a side. The Court rejected the government’s arguments that (1) trademarks are government speech (they aren’t); (2) trademarks are a form of government subsidy (they aren’t); and (3) that the Court should adopt a new test to determine the constitutionality of the disparagement clause (it shouldn’t).

So The Slants will likely get their trademark registration, provided there are no further substantive problems with the mark.

As I said, I think the Court made the right decision. Like it or not, we have a longstanding legal tradition of protecting even offensive speech:

[T]he proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.” Lee v. Tam, 582 U.S. _ (2017) (quoting United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J., dissenting)).

It isn’t the government’s place to police unpopular, offensive, or hateful ideas – it’s the people’s.  Those of us who abhor hateful speech have to counter it with our own speech, and hope that when it all shakes out, the majority of people are well-meaning, rational, and on our side. I get it, though. It's 2017. Simon Tam might be a special case – not everyone who adopts an ethnic slur is a marginalized minority doing so with the intention of co-opting it. Did the Supreme Court just open the floodgates and permit the U.S. Trademark Register to become a wretched hive of scum and villany?

I don’t think so.

Here’s the thing: first, Brandenburg v. Ohio has been on the books for almost 50 years now. National Socialist Party of America v. Village of Skokie, 40 years (40 years last Wednesday – spooky). People know that protected free speech includes hate speech. Have you read YouTube comments before? People know.

Second, I’m going to assume that the small number of opportunists who, inspired by this decision, decide to apply to register a hateful mark solely for the purpose of being hateful probably don’t understand federal trademark registration procedure. It’s a legitimate legal proceeding not unlike filing a lawsuit. U.S. trademark registrations and applications are public record, including the applicant’s name and address. Even if someone pays the $225-600 filing fee, fully expecting to abandon the application, the record is permanent. For the even smaller number of folks who intend for their marks to register, they have to show use in commerce, meaning that at some point they have to transact business using that mark and submit proof, which also becomes public record. If someone really wants their name or business to be permanently associated with a hateful mark, fair enough. For most, though, I imagine it isn’t preferable.

It’ll be interesting to see where trademark law goes from here (if anywhere). I believe the Redskins appeal was stayed pending the outcome of this lawsuit, so that case might be decided soon now that there's guidance from the Court.

As always, if you have any questions about trademarks, contact me!

You can read the full Supreme Court Opinion here!

For more legal scholarship regarding the Tam case, SCOTUSBlog has some solid coverage, as well as all of the amicus briefs if you're a real Constitutional law junkie.

SCORE Intellectual Property Basics Recap

On Thursday I had the privilege of giving a presentation on intellectual property law along with my friend, Michael Gu, to some of the small business owners at Boston SCORE. We covered patents, trademarks, copyrights, and trade secrets. Here’s a quick recap of some of the main takeaways.

Trademarks

Use it or Lose it

Trademark rights arise from use, whether your mark is registered or not. If you’re using your trademark on a "common law" basis (using it without registering it), your rights cease when your use ends. Even if you have a registered trademark, your registration will be cancelled if you fail to show proof of continued during your renewal period.

U.S. Registration is a Legal Proceeding – Get Assistance

Applying for a federal trademark registration is a process involving substantive legal analysis and adherence to strict deadlines. It isn’t as straightforward as applying for a business certificate or filing to create a new entity. For example, responding to an examining attorney’s refusal to register a trademark requires legal argumentation similar to that of a motion in litigation. To that end, it’s strongly recommended that you hire an attorney. Even the USPTO recommends retaining a lawyer. *cough*

Use your Mark Properly

You threaten your trademark rights when you don’t use your mark properly. Some tips for proper use include

  • Using the trademark consistently
  • Using the trademark as an adjective, not a noun or a verb
  • Using trademark notices (TM/SM if it isn’t registered, ® if it is)

Copyrights

Check out my AIGA presentation recap for an overview of basic copyright law.

Patents

Patentable Subject Matter

“Anything under the sun that is made by man” may be patentable. However, patents don’t protect abstract ideas, laws of nature, and natural phenomena. Moreover, the invention must be useful, novel, and non-obvious.

Rights Granted

Patents grant the exclusive right to exclude others from making and using your patented invention. The right must be affirmatively asserted, it isn’t automatic. The right is also limited in geographic scope: a U.S. patent cannot be enforced outside of the U.S.

Visit www.uspto.gov/patent or contact a licensed patent agent or patent attorney for more information.

Trade Secrets

What is a Trade Secret?

A trade secret is information that (1) derives independent economic value from its not being generally know and not being readily ascertainable by other persons; and (2) is subject of reasonable efforts to maintain its secrecy.

The Law Varies from State to State

While many states have adopted the Uniform Trade Secrets Act in some form, a number of states, including Massachusetts, have not. Some protect trade secrets by separate statute, and others protect them under common law.

Closing Thoughts

This was another fun presentation with a very active audience. My Kevin James joke bombed – I guess even I can’t make Paul Blart funny, but you can’t win ‘em all. Thanks again to Boston SCORE for letting us give the presentation, and thanks to Harvard Ed Portal for letting us use their cool location.

As always, if you have any questions about copyright or trademark, don’t hesitate to contact me!

#Trademarks

Let’s talk about hashtags. Can I register one as a trademark? Do they even work as a trademark? What should I do? #help

Believe it or not, the USPTO actually has guidance on hashtag marks – section 1202.18 of the Trademark Manual of Examining Procedure (or “TMEP”), if you’re curious. #blessed

Trademarks are identifiers of the source of goods or services. They’re adjectives: Nike sneakers, Skullcandy headphones, Jif peanut butter, etc. That is why “descriptive” or “generic” marks are considered “weak” as trademarks: they identify the product, not the source. To that end, marks containing the word “hashtag” or the “#” symbol are only registrable as a trademark if they can serve to identify the source of goods or services. #foundationsoftrademarklaw

What this means is that, generally, the words following “hashtag” or “#” have to be registrable as a trademark. Here are a couple of examples of registered hashtag marks from the USPTO: #VISIONISCOOL (optometry and ophthalmology services);  #WERUNTOGETHER (charitable fundraising and athletic event promotion); #WHITEANDWOKE (clothes); #INSTAREADY (cosmetics); #GOBOWLSDEEP (juice bar).

“Hashtag” or “#” by itself typically does not function as a trademark unless it is distinctly stylized or designed, or if the goods and services are not related to social networking. For example:

 (For accounting and financial services)

(For accounting and financial services)

 (For downloadable content sharing app—all I know is that his name is “Hashtaggy” and there’s no way I  wasn’t  going to include him)

(For downloadable content sharing app—all I know is that his name is “Hashtaggy” and there’s no way I wasn’t going to include him)

Because the practical function of a hashtag is to make data searchable on a social network, applying to register a hashtag mark used in connection with any social networking or related services will likely result in a refusal by the USPTO on the basis of “mere descriptiveness” (also known as a “§ 2(e)(1) refusal”). Moreover, adding “hashtag” or “#” to an otherwise unregistrable mark will not make it registrable. #realitycheck

Sometimes the USPTO will also ask applicants to disclaim the “hashtag” or “#” portion of the mark, meaning that applicants cannot claim the exclusive right to use that part of the mark. #noclaimismadetotheexclusiverighttousehashtagapartfromthemarkasshown

In short, hashtag marks can function as trademarks and can potentially be registered at the USPTO.  Personally, given that technology changes so frequently and that social networks come and go along with it, I wonder if registering hashtag marks is worth the expense. I would venture a guess that in 5-10 years, Twitter and Instagram will be replaced by yet another service, possibly one not using hashtags, and when those hashtag marks are up for renewal at the USPTO, the $300+ per class maintenance fees won’t be #worthit.