throbber
No. 15-1293
`================================================================
`
`In The
`Supreme Court of the United States
`---------------------------------  ---------------------------------
`
`MICHELLE K. LEE, DIRECTOR, UNITED
`STATES PATENT AND TRADEMARK OFFICE,
`Petitioner,
`
`v.
`
`SIMON SHIAO TAM,
`
`Respondent.
`
`---------------------------------  ---------------------------------
`
`On Writ Of Certiorari To The
`United States Court Of Appeals
`For The Federal Circuit
`
`---------------------------------  ---------------------------------
`
`BRIEF OF LAW PROFESSORS AS AMICI
`CURIAE IN SUPPORT OF THE PETITIONER
`
`---------------------------------  ---------------------------------
`
`CHRISTINE HAIGHT FARLEY
` Counsel of Record
`AMERICAN UNIVERSITY WASHINGTON
` COLLEGE OF LAW
`4300 Nebraska Avenue, NW
`Washington, DC 20016
`(202) 274-4171
`cfarley@wcl.american.edu
`REBECCA TUSHNET
`GEORGETOWN UNIVERSITY LAW CENTER
`600 New Jersey Avenue, NW
`Washington, DC 20001
`(202) 661-9402
`
`Counsel for Amici Curiae
`
`================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`

`
`i
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ...................................
`iii
`INTEREST OF AMICI CURIAE ...........................
`1
`SUMMARY OF THE ARGUMENT .......................
`1
`ARGUMENT ...........................................................
`3
`
`I. THE FEDERAL CIRCUIT’S DECISION
`WRONGLY TREATS TRADEMARK REG-
`ISTRATION REFUSAL AS A BAN ON
`SPEECH .......................................................
`A. Trademark Law Is Pervasively Content-
`Based ......................................................
`B. Section 2 Disparagement, Like Defama-
`tion Law, Is Content-Based But Viewpoint-
`Neutral ...................................................
`C. Precedents Involving Bans On Speech,
`Even Commercial Speech Precedents,
`Do Not Make Sense For Trademark
`Law ......................................................... 13
` II. DENIAL OF REGISTRATION IS NOT A
`PUNISHMENT FOR SPEECH ................... 15
`A. Registration Is Discretionary, And Di-
`rected Only At The Trademark Func-
`tion, Not At Other Meaning .................. 16
`B. The Disparagement Bar Does Not Im-
`pose An Unconstitutional Condition ..... 20
`
`8
`
`3
`
`4
`
`
`
`

`
`ii
`
`TABLE OF CONTENTS – Continued
`
`Page
`1. The Government Is Not Leveraging
`Refusal Of Registration For Speech
`Outside The Registration Program;
`Applicants Remain Free To Use Any
`Symbols They Wish .......................... 21
`2. Unconstitutional Conditions Analy-
`sis Is Appropriate Because Central
`Hudson Scrutiny Cannot Properly
`Assess A Comprehensive Govern-
`ment Program That Requires Evalu-
`ation Of Speech To Function ............ 26
`3. Analogies To Copyright Are Flawed .... 29
` III. VAGUENESS IS NOT AN INDEPEND-
`ENT REASON TO INVALIDATE THE DIS-
`PARAGEMENT BAR ................................... 32
`CONCLUSION ....................................................... 36
`
`APPENDIX
`List of Amici ......................................................... App. 1
`
`
`
`
`

`
`iii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Agency for Int’l Dev. v. All. for Open Soc’y Int’l,
`Inc., 133 S. Ct. 2321 (2013) ............................... 22, 24
`AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th
`Cir. 1979) ................................................................. 35
`Ark. Educ. Television Comm’n v. Forbes, 523 U.S.
`666 (1998) ................................................................ 11
`B&B Hardware, Inc. v. Hargis Indust., Inc., 135
`S. Ct. 1293 (2015) .................................................... 28
`Balducci Publ’ns v. Anheuser-Busch, Inc., 513
`U.S. 1112 (1995) ...................................................... 14
`Bd. of Trs. of State Univ. of N.Y. v. Fox, 492 U.S.
`469 (1989) ................................................................ 19
`Belmora LLC v. Bayer Consumer Care AG, 819
`F.3d 697 (4th Cir. 2016) ........................................... 16
`Bongrain Int’l (American) Corp. v. Delice de
`France, Inc., 811 F.2d 1479 (Fed. Cir. 1987) ........... 17
`Boos v. Barry, 485 U.S. 312 (1988) ............................. 10
`Cent. Hudson Gas & Elec. v. Pub. Servs. Comm’n
`of N.Y., 447 U.S. 557 (1980) ............................. passim
`Cohen v. California, 403 U.S. 15 (1971) ..................... 18
`Davenport v. Wash. Educ. Ass’n, 551 U.S. 177
`(2007) ......................................................................... 9
`Friedman v. Rogers, 440 U.S. 1 (1979) ........................ 17
`In re Budge Mfg. Co. Inc., 857 F.2d 773 (Fed. Cir.
`1988) ........................................................................ 12
`
`
`
`

`
`iv
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`In re Couriaire Express Int’l, Inc., 222 U.S.P.Q.
`365 (T.T.A.B. 1984) .................................................. 32
`In re Florists’ Transworld Delivery, Inc., No.
`77590475, 2014 WL 2951796 (T.T.A.B. Mar.
`28, 2013) .................................................................... 7
`In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071
`(T.T.A.B. 2008) ......................................................... 12
`In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir.
`2001) ........................................................................ 32
`In re Old Glory Condom Corp., 26 U.S.P.Q.2d
`1216 (T.T.A.B. 1993) .................................................. 8
`In re Quadrillion Publ’g Ltd., No. 75/217,892,
`2000 WL 1195470 (T.T.A.B. Aug. 9, 2000) ................ 8
`In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) .......... passim
`In re Volk Art, Inc., No. 74/693,416, 1998 WL
`377661 (T.T.A.B. July 8, 1998) ................................ 27
`In re Wadhwa, No. 86023037, 2016 WL 1045678
`(T.T.A.B. Feb. 16, 2016) ............................................ 27
`Int’l Order of Job’s Daughters v. Lindeburg &
`Co., 633 F.2d 912 (9th Cir. 1980) .............................. 7
`Kelley v. Chi. Park Dist., 635 F.3d 290 (7th Cir.
`2011) ........................................................................ 31
`Machete Productions, L.L.C. v. Page, 809 F.3d
`281 (5th Cir. 2015) ................................................... 24
`McDermott v. S.F. Women’s Motorcycle Contin-
`gent, 240 Fed. App’x 865 (Fed. Cir. 2007) ............... 33
`
`
`
`

`
`v
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`MGM-Pathe Commc’ns v. Pink Panther Patrol,
`774 F. Supp. 869 (S.D.N.Y. 1991) ............................ 14
`N.Y. Times Co. v. Sullivan, 376 U.S. 254 (1964) ......... 14
`National Endowment for the Arts v. Finley, 524
`U.S. 569 (1998) ........................................................ 34
`Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469
`U.S. 189 (1985) ...................................................... 3, 5
`Parks v. LaFace Records, 329 F.3d 437 (6th Cir.
`2003) ........................................................................ 14
`Penguin Books USA, Inc. v. Dr. Seuss Enters.,
`521 U.S. 1146 (1997)................................................ 14
`Pursuing America’s Greatness v. Fed. Election
`Comm’n, 831 F.3d 500 (D.C. Cir. 2016) ................... 27
`R.A.V. v. City of St. Paul, 505 U.S. 377 (1992) ............ 10
`Regan v. Taxation with Representation of Wash.,
`461 U.S. 540 (1983) ................................................. 24
`Reed v. Town of Gilbert, 135 S. Ct. 2218 (2015) ..... 4, 13
`Renna v. County of Union, 88 F. Supp. 3d 310
`(D.N.J. 2014) ........................................................ 6, 16
`Ridley v. Mass. Bay Transp. Auth., 390 F.3d 65
`(1st Cir. 2004) ...................................................... 9, 11
`Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) ........ 14
`Romm Art Creations Ltd. v. Simcha Int’l, Inc.,
`786 F. Supp. 1126 (E.D.N.Y. 1992) .......................... 14
`Rosenberger v. Rector & Visitors of Univ. of Va.,
`515 U.S. 819 (1995) ............................................. 8, 10
`
`
`
`

`
`vi
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`Rust v. Sullivan, 500 U.S. 173 (1991) ................... 21, 23
`San Francisco Arts & Athletics, Inc. v. United
`States Olympic Comm., 483 U.S. 522 (1987) .......... 14
`Sheetz v. Doctor’s Ass., Inc., 108 U.S.P.Q.2d 1341
`(T.T.A.B. 2013) ......................................................... 23
`Simon & Schuster, Inc. v. Members of the N.Y.
`State Crime Victims Bd., 502 U.S. 105 (1991) ........ 30
`Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208
`(2d Cir. 1985) ........................................................... 35
`Van Camp Sea Food Co. v. Alexander B. Stewart
`Orgs., 50 F.2d 976 (C.C.P.A. 1931) .......................... 35
`Van Camp Sea Food Co. v. Packman Bros., 79
`F.2d 511 (3d Cir. 1935) ............................................ 35
`Walker v. Tex. Div., Sons of Confederate Veterans,
`135 S. Ct. 2239 (2015) ............................................. 24
`
`
`STATUTES
`15 U.S.C. § 1052 .................................................. passim
`15 U.S.C. § 1057 .......................................................... 15
`15 U.S.C. § 1065 .......................................................... 15
`
`OTHER
`Stephen R. Baird, Moral Intervention in the
`Trademark Arena: Banning the Registration
`of Scandalous and Immoral Trademarks, 83
`Trademark Rep. 661 (1993) .................................... 24
`
`
`
`

`
`vii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`Christopher Buccafusco, Making Sense of Intel-
`lectual Property Law, 97 Cornell L. Rev. 501
`(2012) ....................................................................... 31
`Felix S. Cohen, Transcendental Nonsense and
`the Functional Approach, 35 Colum. L. Rev.
`809 (1935) ................................................................ 18
`Compendium of U.S. Copyright Office Practices
`(Third) (2014) §§ 313.6(c), 806.5(B)(3) ................... 31
`Christine Haight Farley, Stabilizing Morality
`in Trademark Law, 63 Am. U. L. Rev. 1019
`(2014) ................................................................... 6, 32
`Michael Grynberg, A Trademark Defense of
`the Disparagement Bar, 126 Yale L.J. Forum
`178 (2016), http://www.yalelawjournal.org/forum/a-
`trademark-defense-of-the-disparagement-bar ............ 7
`2 J. Thomas McCarthy, McCarthy on Trade-
`marks and Unfair Competition (4th ed. 2016) ....... 36
`Beverly W. Pattishall, Trade-Marks and the Mo-
`nopoly Phobia, 50 Mich. L. Rev. 967 (1952) ............ 18
`Lisa P. Ramsey, A Free Speech Right to Trade-
`mark Protection?, 106 Trademark Rep. 797
`(2016) ........................................................... 10, 22, 30
`Edward S. Rogers, Comments on the Modern
`Law of Unfair Trade, 3 Ill. L. Rev. 551 (1909) ........ 18
`Ned Snow, Free Speech and Disparaging Trade-
`marks, 57 B.C. L. Rev. 100 (2016) ........................... 11
`Geoffrey R. Stone et al., Constitutional Law (3d
`ed. 1996) .................................................................... 9
`
`
`
`

`
`viii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`Kathleen M. Sullivan, Unconstitutional Condi-
`tions, 102 Harv. L. Rev. 1413 (1989) ....................... 21
`Rebecca Tushnet, The First Amendment Walks
`into a Bar: Trademark Registration and Free
`Speech, 91 Notre Dame L. Rev. (forthcoming
`2016) (manuscript available at https://papers.ssrn.
`com/sol3/papers.cfm?abstract_id=2745016) ........ 3, 29, 36
`U.S. Patent & Trademark Office, Performance and
`Accountability Report Fiscal Year 2015, https://
`www.uspto.gov/sites/default/files/documents/
`USPTOFY15PAR.pdf at 198 tbl. 16 ....................... 33
`
`
`
`

`
`1
`
`INTEREST OF AMICI CURIAE
`This brief is filed on behalf of the undersigned
`
`Law Professors identified in Appendix A. Amici are
`scholars at U.S. law schools whose research and teach-
`ing focus is intellectual property law. Amici have no di-
`rect interest in the outcome of this litigation. Amici are
`concerned that the Court of Appeals for the Federal
`Circuit’s decision below – that all content-based deter-
`minations in trademark law must survive strict scru-
`tiny – would wreak havoc on trademark law. We wish
`to bring to the Court’s attention the implications of
`such a rule on trademark law.1
`
`---------------------------------  ---------------------------------
`
`SUMMARY OF THE ARGUMENT
`The Federal Circuit’s ruling that the § 2(a) dispar-
`
`agement provision is unconstitutional, if upheld, could
`allow for numerous provisions of the Trademark Act to
`be overturned, dismantling the modern trademark sys-
`tem. The trademark system is premised on evaluating
`speech and making content-based determinations.
`Granting a trademark registration requires content-
`based determinations, though not viewpoint-based, as
`
`
`
`1 Pursuant to Rule 37.6, Amici affirm that no counsel for a
`party authored this brief in whole or in part and that no person
`other than Amici and their counsel made a monetary contribution
`to its preparation or submission. Petitioner’s and Respondent’s
`consent to the filing of amicus briefs is filed with the Clerk. The
`Parties were timely notified of the intent to file this amicus brief
`pursuant to Rule 37.2. Amici’s institutional affiliations are pro-
`vided only for purposes of identification.
`
`
`
`

`
`2
`
`words are evaluated independent of applicants’ indi-
`vidual viewpoints.
`
`In no way does the refusal to register a trademark
`
`prevent its use or diminish public debate. Rather than
`facilitating public debate, a trademark registration is
`a government-issued document that makes it easier
`for its owner to suppress the speech of others. A trade-
`mark registration is not an entry pass to the forum; it
`is a right to exclude. Thus in trademark law whether
`the government refuses registration to a mark owner
`or it arms that owner with a registration to enforce
`against other speakers, the government inevitably in-
`terferes in someone’s speech.
`
`The Federal Circuit’s mistake was to treat a regu-
`
`latory, benefit-granting program as if it were a ban on
`speech. Although prohibiting the use of disparaging
`marks would suppress speech, the government does
`not suppress speech by refusing to include these marks
`on the federal register. If a firm wants to use the N-
`word as its mark, it is free to do so under trademark
`law. Instead of doctrines focused on banned speech, the
`unconstitutional conditions doctrine is a more appro-
`priate test for the trademark registration system, and
`because registration does not attempt to affect a regis-
`trant’s speech outside the four corners of the registra-
`tion it poses no First Amendment problem.
`
`The different justifications, functioning, and risks
`
`of registration compared to laws punishing speech
`make application of doctrines about banning speech to
`the Lanham Act both incoherent and unwise. To rule
`
`
`
`

`
`3
`
`otherwise would jeopardize much of the structure of
`trademark law.
`
`---------------------------------  ---------------------------------
`
`ARGUMENT
`I. THE FEDERAL CIRCUIT’S DECISION
`WRONGLY TREATS TRADEMARK REG-
`ISTRATION REFUSAL AS A BAN ON
`SPEECH.
`In its decision below, the Federal Circuit acknowl-
`
`edged that its decision put other provisions of the Lan-
`ham Act in jeopardy. Although its specific holding was
`limited to the refusal of registration for disparaging
`marks under 15 U.S.C. § 1052(a) [§ 2(a)], the en banc
`court made clear that its analysis would require
`reconsidering “the constitutionality of other portions
`of § 2 in light of the present decision.” In re Tam, 808
`F.3d 1321, 1130 n.1 (Fed. Cir. 2015). This is no idle
`threat. If the Federal Circuit’s ruling stands, much of
`the screening that the United States Patent and
`Trademark Office [USPTO] performs could also be
`found unconstitutional, and many aspects of the cur-
`rent regime, from incontestability2 to intent-to-use
`
`
`
`2 The result of incontestability is that “trademarks” with no
`meaning in the marketplace may be used to suppress others’ uses
`of descriptive terms, despite the fact that consumers could not be
`harmed by such uses. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,
`469 U.S. 189, 207-09 (1985) (Stevens, J., dissenting); Rebecca Tush-
`net, The First Amendment Walks into a Bar: Trademark Registra-
`tion and Free Speech, 91 Notre Dame L. Rev. (forthcoming 2016)
`(manuscript available at https://papers.ssrn.com/sol3/papers.cfm?
`abstract_id=2745016).
`
`
`
`
`

`
`4
`
`applications,3 to the infringement standard itself,
`would be threatened. This widespread vulnerability
`suggests that the Federal Circuit’s treatment of the
`Lanham Act’s regulatory scheme as presumptively un-
`constitutional is misguided.
`
`
`
`A. Trademark Law Is Pervasively Content-
`Based.
`The Federal Circuit held that all 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. In re Tam, 808 F.3d at 1335 (“It is be-
`yond dispute that § 2(a) discriminates on the basis of
`content in the sense that it ‘applies to particular
`speech because of the topic discussed,’ ” citing Reed v.
`Town of Gilbert, 135 S. Ct. 2218, 2227 (2015).). But if
`strict scrutiny applies whenever a program of govern-
`ment benefits for specific kinds of commercial speech
`demands content determinations, then much of § 2,
`and possibly much more than that, is unconstitutional.
`
`In addition to the bar on disparaging marks, § 2
`
`prohibits the registration of any mark that is: scandal-
`ous; immoral; deceptive; falsely suggestive of a connec-
`tion with persons, institutions or religions; likely to
`cause confusion with an existing mark; descriptive;
`
`
`3 The Lanham Act’s intent-to-use provisions allow claimants
`to assert rights in advance of any use – that is, before consumers
`form any beliefs about the source of products or services bearing
`the mark, and thus before they could actually be confused by com-
`peting uses, changing the common law first-to-use rules.
`
`
`
`

`
`5
`
`misdescriptive; functional; a geographic indication for
`wine or spirits other than the place of origin of the
`goods; government insignia; a living person’s name,
`portrait or signature without written consent; or a sur-
`name. 15 U.S.C. §§ 1052(a-e). Nor, because § 2 requires
`that a mark be distinctive, may generic symbols be reg-
`istered. Id. at § 1052 (limiting registration to trade-
`marks “by which the goods of the applicant may be
`distinguished from the goods of others”); Park ‘N Fly,
`Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985).
`Most of these bars have been in place since the incep-
`tion of the federal trademark registration program in
`1905,4 and are routinely applied by the USPTO.
`
`This broad list of bars to registration serves a
`
`number of policies that go well beyond protecting con-
`sumers from deception in the marketplace. A number
`of the bars deal with confusing or deceptive marks.5
`Some bars, and the prohibition on registering generic
`symbols, relate to another central concern of trade-
`mark law: competition.6 Significantly, however, a
`number of the bars apply to marks that are neither
`
`
`
`4 The disparagement bar was enacted in 1946, as part of the
`Lanham Act’s original text. Trademark Act of 1946, ch. 540, title
`I, § 2, 60 Stat. 427.
`
`5 Specifically, the bars for marks that are deceptive; falsely
`suggestive of a connection with persons, institutions or religions;
`likely to cause confusion with an existing mark; and primarily ge-
`ographically deceptively misdescriptive directly implicate decep-
`tion.
`
`6 The bars for marks that are descriptive, misdescriptive,
`merely a surname, and functional limit the monopolization of words
`and designs that competitors may desire to use in commerce.
`
`
`
`
`

`
`6
`
`confusing/deceptive nor anticompetitive on their face.
`These include the disparaging, scandalous, and im-
`moral bars, but also include the bars on inaccurate but
`not necessarily misleading geographical indications of
`origin for wine or spirits, names of specific living per-
`sons absent written consent, and government in-
`signia.7 These bars relate to other policy concerns.
`What the Federal Circuit observed of disparagement is
`equally true of the competition-related and other non-
`deception-related bars:
`
`[t]hese latter restrictions cannot be justified
`on the basis that they further the Lanham
`Act’s purpose in preventing consumers from
`being deceived. These exclusions from regis-
`tration do not rest on any judgment that the
`mark is deceptive or likely to cause consumer
`confusion, nor do they protect the mark-
`holder’s investment in his mark.
`
`In re Tam, 808 F.3d at 1329. These bars, including the
`disparagement bar, do target categories of symbols
`that are less likely to serve the trademark function
`than other symbols because of the additional meanings
`
`
`7 Section 2(b), for instance, bars marks consisting of flags,
`coats of arms, or “other insignia of the United States, or of any State
`or municipality, or of any foreign nation.” 15 U.S.C. § 1052(b). These
`bans are effectuated on a per se basis. This list of banned insignia
`represents institutions that Congress presumably thought should
`be spared any commercial appropriation, not just instances that
`would sully these symbols based on the particular use involved.
`Renna v. County of Union, 88 F. Supp. 3d 310, 320-21 (D.N.J. 2014)
`(discussing the free speech interests involved in making insignia
`unregistrable); Christine Haight Farley, Stabilizing Morality in
`Trademark Law, 63 Am. U. L. Rev. 1019, 1037-38 (2014).
`
`
`
`

`
`7
`
`they carry that can overwhelm or detract from poten-
`tial source-signifying function. See Michael Grynberg,
`A Trademark Defense of the Disparagement Bar, 126
`Yale L.J. Forum 178 (2016), http://www.yalelawjournal.org/
`forum/a-trademark-defense-of-the-disparagement-bar.
`Nonetheless, they are not centrally about deception.
`For example, the bar on registering symbols that
`merely truthfully describe the applicant’s goods and
`services is obviously content-based, and it is also
`clearly not about deception. The descriptiveness bar,
`like the others, is connected to the broader policy goals
`of trademark law, but that is to say that registration,
`and the registration bars, serve government interests
`beyond deception.
`
`To determine whether the mark itself, or matter
`
`contained within the mark, corresponds to any of the
`bars in § 2, the USPTO must evaluate the content of
`the mark, with the exception of the bar on utilitarian
`functionality.8 Thus, just as the bar at issue in this case
`
`
`
`8 The functionality bar in § 2(e)(5) does not require the
`USPTO to decipher a meaning from the applied-for design. 15
`U.S.C. § 1052(e)(5). Aesthetic functionality, however, requires a
`determination of the aesthetic value of a design. Thus, registra-
`tion may hinge on a determination of what the design depicts, Int’l
`Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 919
`(9th Cir. 1980) (finding that the applied-for design was the em-
`blem of a young women’s fraternal organization), or what the
`design conveys, In re Florists’ Transworld Delivery, Inc., No.
`77590475, 2013 WL 2951796, at *9-10 (T.T.A.B. Mar. 28, 2013)
`(finding that the color black communicates particular messages
`such as luxury and elegance, or grief and condolence, and that the
`color of floral packaging can be just as important as the color of
`the flowers themselves in conveying such messages.).
`
`
`
`

`
`8
`
`requires the government to evaluate the meaning of
`Mr. Tam’s mark in the context of his services, so too do
`these other bars. For instance, if an applicant applies
`for a registration of the word mark BRAMLEY, the
`USPTO must determine if that word would be under-
`stood by a substantial number of consumers as the
`name of a living person, a place, or a surname. In re
`Quadrillion Publ’g Ltd., No. 75/217,892, 2000 WL
`1195470, at *1-2 (T.T.A.B. Aug. 9, 2000). Likewise, in
`determining whether a word or words are confusing,
`deceptive, descriptive or misdescriptive, the USPTO
`must first parse the meaning of the word to its audi-
`ence. Nor is this task limited to words. Consider § 2(b),
`which requires the USPTO to determine whether an
`applied for design is a “simulation” of an existing flag.
`See In re Old Glory Condom Corp., 26 U.S.P.Q.2d 1216
`(T.T.A.B. 1993).
`
`
`
`B. Section 2 Disparagement, Like Defama-
`tion Law, Is Content-Based But Viewpoint-
`Neutral.
`The Federal Circuit treated disparagement as dis-
`
`tinguishable from the other § 2 bars because it found
`disparagement to be not only content-based but also
`viewpoint-based. In re Tam, 808 F.3d at 1335. However,
`the line between content- and viewpoint-based regula-
`tion is not helpful without a theory of why the particu-
`lar regulation at issue exists. See, e.g., Rosenberger v.
`Rector & Visitors of Univ. of Va., 515 U.S. 819, 831
`(1995) (noting that the distinction between content
`and viewpoint discrimination “is not a precise one”);
`
`
`
`

`
`9
`
`Geoffrey R. Stone et al., Constitutional Law 1765 (3d
`ed. 1996) (“That it is unconstitutional for the govern-
`ment to act for the purpose of promoting speech favor-
`ing the Democrats (as opposed to, say, the Republicans)
`does not necessarily entail that it is unconstitutional
`for it to act . . . for the purpose of promoting speech fa-
`voring democracy (as opposed to, say, totalitarian-
`ism).”).
`
`Given the meaning of “disparagement” as a con-
`
`cept that could apply to anyone, the ban on disparaging
`marks is more appropriately characterized as content-
`based rather than viewpoint-based. Section 2(a) pro-
`hibits registration of a mark that disparages anyone,
`abortionist or anti-choice zealot. See Ridley v. Mass.
`Bay Transp. Auth., 390 F.3d 65, 82-87 (1st Cir. 2004)
`(considering ban on disparaging subway ads). The Fed-
`eral Circuit en banc majority claimed that “[t]he legal
`significance of viewpoint discrimination is the same
`whether the government disapproves of the message
`or claims that some part of the populace will disap-
`prove of the message.” In re Tam, 808 F.3d at 1336. If
`the “part of the populace” at issue were static and un-
`changing no matter what mark was at issue, that
`might be true. However, because the “part of the popu-
`lace” whose views are considered changes depending
`on the specifics of the applied-for mark, no particular
`group or set of viewpoints receives protection denied to
`everyone else. See id. at 1372 (Dyk, J., concurring and
`dissenting) (quoting Davenport v. Wash. Educ. Ass’n,
`551 U.S. 177, 189 (2007)) (“[T]he standard is not based
`on the government’s disagreement with anything.
`
`
`
`

`
`10
`
`Rather, it is based on an objective, ‘neutral’ assessment
`of a non-government perspective – in this case, a ‘sub-
`stantial composite of the referenced group.’ . . . [T]here
`is no ‘realistic possibility that official suppression of
`ideas is afoot.’ ”). Like defamation, which is content-
`based but not viewpoint-based, the disparagement bar
`protects everyone. In the world of trademark registra-
`tion, no one is licensed to fight freestyle; we are all “to
`follow Marquis of Queensbury rules” in our registered
`trademarks. R.A.V. v. City of St. Paul, 505 U.S. 377, 391
`(1992); see also Lisa P. Ramsey, A Free Speech Right to
`Trademark Protection?, 106 Trademark Rep. 797, 876-
`77 (2016).
`
`Furthermore, viewpoint discrimination in the past
`
`has been tied to the viewpoint of the person who is los-
`ing out because of her speech, such as a speaker denied
`school funding because her viewpoint was religious in-
`stead of nonreligious. See Rosenberger v. Rector & Vis-
`itors of Univ. of Va., 515 U.S. 819, 831 (1995). By
`contrast, the disparagement exclusion denies registra-
`tions equally to people trying to disparage a group and
`to people trying to reclaim terms on behalf of the dis-
`paraged group, as long as a substantial composite of
`the referenced group would see the term as disparag-
`ing. See R.A.V. v. City of St. Paul, 505 U.S. at 391 (a
`hypothetical statute that prohibited “odious racial epi-
`thets . . . to proponents of all views” would not discrim-
`inate on basis of viewpoint). Thus, the disparagement
`bar is also neutral as to the applicant’s membership in
`and viewpoint on the particular disparaged group at
`issue. See Boos v. Barry, 485 U.S. 312, 315-19 (1988)
`
`
`
`

`
`11
`
`(plurality) (upholding law against display of any sign
`within 500 feet of a foreign embassy if the sign would
`tend to bring that foreign government into “public
`odium” or “disrepute”; restriction was not viewpoint-
`based because looking at policies of foreign govern-
`ments was neutral method of identifying covered
`speech); Ridley, 390 F.3d at 90 (“[G]uidelines prohibit-
`ing demeaning or disparaging ads are themselves
`viewpoint neutral.”); id. at 91 (“[T]he state is not at-
`tempting to give one group an advantage over another
`in the marketplace of ideas.”). Cf. Ark. Educ. Television
`Comm’n v. Forbes, 523 U.S. 666, 683 (1998) (denying
`participation in political debate to candidate with min-
`imal public support was not viewpoint-based, because
`participation would be denied to anyone who lacked
`sufficient support, no matter what views he held). So,
`for example, if an applicant applied for CELEBRA-
`SIANS for an advocacy group that sought to bar Asian
`immigration, the mark would not be disparaging even
`if the group’s intention was disparaging.
`
`The In re Tam majority’s error was to find view-
`
`point discrimination because the bar relies on deter-
`mining what a group of people understands the
`meaning of a term to be, in context. The error of con-
`flating the speaker’s viewpoint with the audience’s un-
`derstanding, if left undisturbed, would indicate that
`the deceptiveness and descriptiveness bars are also
`viewpoint-based. See Ned Snow, Free Speech and Dis-
`paraging Trademarks, 57 B.C. L. Rev. 100, 145 (2016).
`Terms that convey materially false meanings about a
`good or service are unregistrable (regardless of the
`
`
`
`

`
`12
`
`presence of an intent to deceive), In re Budge Mfg. Co.,
`857 F.2d 773, 775 (Fed. Cir. 1988), but misdescriptive
`terms that have secondary meaning are registrable so
`long as consumers do not find the misdescription to
`be material to their purchasing decision. 15 U.S.C.
`§ 1052(f ), while terms that accurately describe the
`goods or services with which they are used can only be
`registered with secondary meaning. Id. All of these
`rules require subjective, observer-based inquiries de-
`pendent on what the audience believes and considers
`important, just as the perception of the target group
`makes the difference for disparagement.
`
`The regulatory nature of trademark registration
`
`is vital here because each individual decision is based
`on the specifics of what the applicant is applying for.
`Each individual decision may involve a viewpoint, but
`the law itself does not judge based on viewpoint. Nor,
`again, does it matter what the applicant’s identity or
`viewpoint is, as long as the targeted group would find
`the mark disparaging. Trademark law simply does not
`care about the applicant’s views. See In re Heeb Media,
`LLC, 89 U.S.P.Q.2d 1071, 1077 (T.T.A.B. 2008) (holding
`that the determination of the meaning of the mark cen-
`ters on the referenced group’s perception of the term
`rather than the applicant’s intentions.)
`
`
`
`
`
`
`

`
`13
`
`C. Precedents Involving Bans On Speech,
`Even Commercial Speech Precedents,
`Do Not Make Sense For Trademark Law.
`The Federal Circuit’s mistake was to treat a regu-
`
`latory, rights-granting program as if it were a punish-
`ment for speech, rather than a government program
`awarding rights to control commercial speech to one
`private party: rights that allow the registrant to sup-
`press the speech of others. The different justifications,
`functioning, and risks of registration compared to laws
`punishing speech make application of precedents in-
`volving punishment for speech to the Lanham Act both
`incoherent and unwise.
`
`Reed, on which the Federal Circuit relied, evalu-
`
`ated a prohibition on speech. Cent. Hudson Gas & Elec.
`v. Pub. Servs. Comm’n of N.Y., 447 U.S. 557 (1980), an-
`other case invoked by the Federal Circuit, likewise
`establishes a four-part test to determine if bans on
`commercial speech survive First Amendment scrutiny.
`The first step in the inquiry asks whether the speech
`at issue is false or misleading; if so, it may simply be
`banned. Several consequences follow for evaluating
`trademark law: first, Central Hudson, like Reed, is not
`appropriate for evaluati

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