The Intersection of Free Speech and Trademark Law

We recently discussed the convergence of Anti-SLAPP laws and copyright law. As ongoing litigation in the Federal Circuit demonstrates, the First Amendment also intersects intellectual property law in the context of trademark rights.

In April, the Federal Circuit upheld the U.S. Patent and Trademark Office’s denial of trademark registration for an Asian-American band called “The Slants.” The Court reasoned that denying registration for a “disparaging” trademark as defined by the Lanham Act did not amount to a First Amendment violation since the “PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed.” A week later the earlier opinion was vacated and the Court voted for a sua sponte en banc hearing for another chance to answer this constitutional question: whether denying registration for a  “disparaging” trademark violates the First Amendment.

More recently, in what the Consumer Law & Policy Blog called “Another Important Win for Free Speech,” the Fourth Circuit, in Radiance Foundation v. NAACP, held that the Radiance Foundation’s characterization of the NAACP as “National Association for the Abortion of Colored People,” did not infringe on the NAACP’s trademark rights. Citing New Kids on the Block v. News Am. Publ’g, Inc., the Court held that if such a characterization constituted trademark infringement, “many social commentators and websites would find themselves victims of litigation aimed at silencing or altering their message, because, as noted, ‘it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purposes without using the mark.’”

The line of demarcation between Constitutionally-protected free speech and disparaging names unworthy of trademark protection will likely remain a “moving target” for years to come, and will have substantial economic impact for those that wish to keep or enforce trademarks that are viewed as “disparaging” – just ask the Washington Redskins.  Check back for further updates on this interesting intersection of free speech and trademark law.