6/9/2015 8:10 AM ARTICLES

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1 ARTICLES TERRIFYING TRADEMARKS AND A SCANDALOUS DISREGARD FOR THE FIRST AMENDMENT: SECTION 2(A) S UNCONSTITUTIONAL PROHIBITION ON SCANDALOUS, IMMORAL, AND DISPARAGING TRADEMARKS Kristian D. Stout* TABLE OF CONTENTS I. INTRODUCTION II. TRADEMARKS: SCANDALOUS DISPARAGEMENT III. THE UNCONSTITUTIONAL CONDITIONS DOCTRINE A. Trademarks, the First Amendment, and Unconstitutional Conditions B. Applying the Unconstitutional Conditions Doctrine C. Commercial Speech D. Intertwined Speech * Associate Director for Technology Policy at the International Center for Law and Economics. J.D., magna cum laude, Rutgers School of Law. Tweet to him The author would like to thank Professors Rand Rosenblatt and William McNichol for their incredibly helpful comments and criticism of this paper as it was being developed. 213

2 214 ALB. L.J. SCI. & TECH. [Vol IV. TRADEMARKS AS A LIMITED PUBLIC FORUM V. CONCLUSION: A MAJOR PROBLEM FOR THE PTO AND TTAB I. INTRODUCTION It is uncontroversial to hold that speech is more than mere words. Speech is images, iconography, logos, and illustrations. Speech is wearing black armbands in school to protest a war, 1 or burning an American flag to demonstrate against public policy. 2 Speech can offend. 3 One needs look no further than the reaction to cartoonists by religious fundamentalists: the offense of cartoons can be so deep that it moves individuals to commit murder. 4 When that speech is undertaken as part of commerce it does not magically lose any political, social or religious dimension it had when in a non-commercial context. 5 Cartoons issued bearing the image of the Prophet as part of a commercial magazine are surely a political statement deserving of protection. The situation is the same if an organization adopts a logo that is derisive to a particular political or religious ideology that publication is making a protected, expressive statement through its branding. However, when it comes to obtaining a trademark on such a brand, speech receives significantly less protection than it does in other areas of law. The ongoing efforts to cancel the Redskins trademark are illustrative of the struggle a registrant of a controversial mark faces in light of lesser constitutional protections. 6 First used by the football club in 1933, 7 the 1 Tinker v. Des Moines Indep. Cmty. Sch. Dist., 393 U.S. 503, 514 (1969). 2 United States v. Eichman, 496 U.S. 310, (1990); Texas v. Johnson, 491 U.S. 397, (1989). 3 Snyder v. Phelps, 131 S. Ct. 1207, 1220 (2011). 4 Dan Bilefsky & Maïa de la Baume, Terrorists Strike Charlie Hebdo Newspaper in Paris, Leaving 12 Dead, N.Y. TIMES, Jan. 7, 2015, html?_r=0. 5 See discussion infra Part III.C. 6 See Theresa Vargas, Federal Agency Cancels Redskins Trademark Registration, Says Name is Disparaging, WASH. POST, June 18, 2014, trademark-registration-says-name-is-disparaging/2014/06/18/e7737bb8-f6ee- 11e3-8aa9-dad2ec039789_story.html (examining the Washington Redskins trademark registration constraints).

3 2015] TERRIFYING TRADEMARKS 215 Redskins have undergone multiple challenges to the use of their mark since The Redskins enjoyed initial success by relying upon a laches defense: the challengers had simply waited too long to challenge the controversial mark. 9 However, in June 2014, the Trademark Trial and Appeal Board (TTAB) decided that this defense no longer applied. 10 In order to prove that their mark was not disparaging, the Redskins were forced to undergo a historical and cultural analysis in order to determine the extent of the mark s offensiveness. 11 Losing that argument, 12 the Redskins turned to a last ditch effort: argue that the First Amendment really can protect offensive speech, even in the context of the Lanham Act. 13 I call it a last ditch effort because, even though Pro Football rightly argues that the Lanham Act attempts to unconstitutionally regulate the substantive content of speech, 14 and that it also burdens disfavored speech that is nonetheless protected under the jurisprudence of the Supreme Court, 15 the Federal Circuit has to date not seemed at all concerned with the First Amendment implications of the Lanham Act. Section 2(a) of the Lanham Act the federal statute governing 7 Alicia Jessop, Inside the Legal Fight to Change the Washington Redskins Name, FORBES (Oct. 15, 2013, 8:34 PM), /2013/10/15/a-look-at-the-legal-fight-to-change-the-washington-redskins-name/. 8 Id. 9 Id. 10 Mason Levinson & Susan Decker, Redskins Disparaging Trademark Canceled by Patent Office, BLOOMBERGBUSINESS (June 18, 2014, 1:29 PM), 11 See Ken Motolenich-Salas, The Four Quarters of the Redskins Trademark Cancellations: The Revival of the Disparagement Doctrine, 51-OCT ARIZ. ATT Y 20, 22 (2014) ( [T]he TTAB relied on two categories of evidence: (i) general anaylsis of the word and (ii) the specific views of Native Americans at the time of registration. ). 12 See id. ( [T]he TTAB found that... approximately 30 percent of Native Americans... found the term redskins to be disparaging at all times,... which warranted cancellation on the grounds of disparagement.... ). 13 See generally Pro-Football, Inc. s Memorandum of Law in Support of its Motion for Summary Judgment on Constitutional Claims III IV at 5 17, Pro- Football, Inc. v. Blackhorse, No. 1:14-cv-1043-GBL-IDD (E.D. Va. Feb. 23, 2015), available at The-Redskins-Brief. 14 Id. at Id. at 7 8.

4 216 ALB. L.J. SCI. & TECH. [Vol the registration of trademarks places a prohibition on the registration of scandalous, immoral or disparaging marks. 16 In support of this prohibition, the Patent and Trademark Office (PTO), together with the TTAB and the Federal Circuit, have characterized the benefit granted by the Lanham Act as merely procedural and not substantive. 17 Further, by preventing registration of immoral or disparaging marks, the Federal Circuit believes that there is no actual harm suffered said registrant remains free to utilize the mark in commerce, albeit without the protection of federal law. 18 However, this position propounded by the TTAB and reinforced by the Federal Circuit misses a very important dimension of the issue. The Lanham Act essentially creates a federally backed market in trademarks one in which nonparticipants can be severely penalized by being unable to effectively compete on the national stage. To have an unprotected mark, one that any other entity is free to exercise as part of its commercial or noncommercial presence, can mean a total lack of identity. 19 Further, the Lanham Act grants a number of benefits, discussed below, that taken together create a significant basis for investment on the part of individuals. 20 Thus, to be denied federal registration of a trademark is not so insignificant a thing as the Federal Circuit would have us believe. Surely the denied registrants can continue to speak, but their voice is significantly muffled. 21 This article argues that the practice of silencing immoral, scandalous, and disparaging trademarks is unconstitutional, from at least two perspectives. First, the Unconstitutional Conditions Doctrine prevents the Lanham Act from discriminating against immoral or disparaging trademarks. 16 See Lanham Act, Pub. L. No , 2(a), 60 Stat. 427, 428 (1946) (codified as amended at 15 U.S.C. 1052(a) (2012)). 17 See, e.g., In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981). 18 See id. at 486 (discussing Congress intent that unregistered scandalous marks do not have the same benefits as registered ones). 19 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992) ( Protection of trade dress, no less than of trademarks, serves the [Lanham] Act s purpose to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers. ). 20 See infra notes and accompanying text. 21 Cf. McGinley, 660 F.2d at 484 (holding that an applicant s First Amendment rights would not be abridged by the refusal to register his mark ).

5 2015] TERRIFYING TRADEMARKS 217 In essence, since trademarks constitute intertwined speech that is an inextricable mixture of commercial and noncommercial speech Congress s limitation of that speech as a condition for the benefit of federal registration is unconstitutional. 22 Second, trademarks may constitute a public forum such that the government would be restricted from viewpoint discrimination. 23 Part II of this article offers a brief overview of trademark law and the Lanham Act. Part III introduces the Unconstitutional Conditions Doctrine and presents a test from that body of law that should be applied to 2. Part III also analyzes the ways that the First Amendment and the Unconstitutional Conditions Doctrine may provide protection for marks otherwise prohibited under 2(a) of the Lanham Act. Part IV considers the possibility that trademarks may constitute a limited public forum in such a way that the government would be prevented from viewpoint discrimination against registrants. Part V concludes by synthesizing the law presented and demonstrating that the Lanham Act faces a very serious constitutional problem. II. TRADEMARKS: SCANDALOUS DISPARAGEMENT Under state common law, state statutory law, and federal statutory law, a trademark is a symbol, word, or other similar device used to identify and distinguish the goods or services of one seller from the goods or services of others. 24 In order to be legally protected as a trademark, a symbol must be distinctive. 25 That is, the symbol must be capable of serving the function of distinguishing the source of one product from another. 26 A trademark must also be more than merely descriptive of some attribute of the product and cannot be a fully generic term for the product. 27 The Lanham Act, 15 U.S.C. 1051, et seq., was passed by Congress in 1946 in order to create a uniform federal trademark law. 28 Among the various benefits that the Lanham Act bestows 22 See discussion infra Part III.D. 23 See discussion infra Part IV. 24 J. THOMAS MCCARTHY, 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 3:1 (4th ed. 2015). 25 Id. 26 Id. 27 See id. (stating the essential elements for trademark qualification). 28 See Patrick E. Boland, Wrongful Assault on the Trademark System, 1987 COLUM. BUS. L. REV. 153, (1987) (discussing the lack of uniformity in

6 218 ALB. L.J. SCI. & TECH. [Vol upon the holders of federally registered trademarks, a trademark owner is permitted to enter his mark into evidence and to use it as prima facie evidence of validity. 29 Further, a federally registered mark that complies with the requirements of 1065 may be incontestable. 30 Additionally, the Lanham Act also provides certain rights, such as constructive nationwide use as of the filing date of a registration application, 31 and certain federal remedies, such as attorneys fees otherwise unavailable for common law trademarks. 32 Particularly for businesses that operate in a multitude of jurisdictions, the federally recognized registration of their trademarks provides an efficient venue for the vindication of their rights. 33 For instance, trademark owners may bring suits in federal court in order to enforce their rights. 34 Federally registered marks are also listed in the Trademark Registrar s databases and the Official Gazette, 35 and are thus publicly visible across the entire country and the world. 36 Trademark owners may also use their United States registrations as the basis to obtain registration in foreign countries, 37 and can use their federal trademark law sought to be remedied by the Lanham Act). 29 Lanham Act, Pub. L. No , 33, 60 Stat. 427, (1946) (codified as amended at 15 U.S.C (2012)). 30 Id. 15, 60 Stat. at (codified as amended at 15 U.S.C (2012)). 31 Id. 22, 60 Stat. at 435 (codified as amended at 15 U.S.C (2012)). 32 Id. 35, 60 Stat. at (codified as amended at 15 U.S.C (2012)). 33 See id. 21, 60 Stat. at 435 (codified as amended at 15 U.S.C (2012)) (allowing those with registered trademarks to bring appeals before the United States Court of Appeals for the Federal Circuit). 34 Id. 35 Id. 12, 60 Stat, at 432 (codified as amended at 15 U.S.C (2012)). 36 See Trademark Official Gazette (TMOG), U.S. PAT. & TRADEMARK OFF., (last visited Apr. 25, 2015) (explaining that the Trademark Official Gazette is published weekly, containing bibliographic information regarding each published trademark as well as a list of cancelled and renewed registrations); See All Trademark Data is Public, U.S. PAT. & TRADEMARK OFF., (last visited Apr. 25, 2015) (indicating that all information submitted to the USPTO during the trademark registration process is made publically viewable). 37 Trademark FAQs: Why Should I Obtain a Trademark?, U.S. PAT. & TRADEMARK OFF., (last visited Apr. 25, 2015).

7 2015] TERRIFYING TRADEMARKS 219 registration to record with the Customs and Border Protection Service to prevent the importation of foreign goods that infringe on their mark. 38 In order to be registrable, a trademark must be used in or be intended for use in commerce. 39 For the purposes of the Lanham Act, a trademark is used in commerce when, in connection with a good or service, it is used as part of an organization s ordinary course of trade. 40 In the case of goods, the trademark must be on the containers, tags, labels, or other relevant documents related to the good. 41 For services, a mark is used in commerce when it is: [U]sed or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. 42 A sufficiently distinct symbol is federally registrable as a trademark for goods or services subject to a handful of exceptions set forth in 2 of the Lanham Act. 43 This article is interested in the 2(a) prohibitions on marks that are either immoral... or scandalous matter, (the scandalous prohibition) or else matter[s] which may disparage or falsely suggest a connection 38 Lanham Act 42, 60 Stat. at (codified as amended at 15 U.S.C (2012)). 39 The authority to regulate trademarks under the Lanham Act is based on and co-extensive with congress s power to regulate commerce. See S. REP. NO , at 7 8 (1992) (explaining that with regard to S. 759, facilitating equal access to Federal and State forums for trademark plaintiffs, is justified under the Commerce Clause). Commerce means all commerce that Congress is entitled to regulate under the Constitution. Lanham Act 45, 60 Stat. at 443 (codified as amended at 15 U.S.C (2012)). The Lanham Act is the inheritor of the 1905 Trademark Act, which was itself passed under the full extent of the Commerce Clause in order to avoid being declared unconstitutional, as its predecessor had been so declared. See Trade-Mark Cases, 100 U.S. 82, (1879) (explaining that intrastate commerce is not subject to Congressional control, and that laws set forth by Congress regulating commerce are typically clearly meant to regulate commerce other than intrastate commerce; where they are not, they are in excess of Congress power, and indicating that the Trademark law in question appeared to be in excess of Congress Commerce Clause powers). 40 Lanham Act 45, 60 Stat. at 444 (codified as amended at 15 U.S.C (2012)). 41 Id. 42 Id. 43 See id. 2, 60 Stat. at (codified as amended at 15 U.S.C (2012)) (providing exceptions).

8 220 ALB. L.J. SCI. & TECH. [Vol with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute (the disparaging prohibition). 44 Before presenting a full analysis of the PTO s and Federal Circuit s approach to the scandalous prohibition and the disparaging prohibition, this article presents some initial remarks about the Lanham Act s historical context with respect to the Supreme Court s First Amendment jurisprudence. The passage of the Lanham Act in 1946 predates much of modern First Amendment jurisprudence. 45 Two Supreme Court cases decided not long before 1946 demonstrate commonly accepted limitations on freedom of speech that may have influenced the legal presumptions at the time of the Lanham Act s drafting. 46 For instance, as late as 1931, there was a serious split in the court as to whether it was constitutional to suppress scandalous speech. 47 Near v. Minnesota ex rel. Olsen involved a Minnesota law that classified malicious, scandalous and defamatory newspapers or other periodicals as public nuisances. 48 Once so classified, the law allowed for the periodical to be enjoined. 49 At issue in the case was a publication of the Saturday Press, in which it was alleged that the Chief of Police in Minneapolis was corruptly working with or influenced by a prominent Jewish gangster who ran racketeering, gambling, and other illicit 44 Lanham Act 2(a), 60 Stat. at 428 (codified as amended at 15 U.S.C. 1052(a) (2012)). 45 See, e.g., Miller v. California, 413 U.S. 15, 24 (1973) (setting forth the factors to be used in determining whether a statute designed to regulate obscene materials is sufficiently limited); Brandenburg v. Ohio, 395 U.S. 444, (1969) (holding that statutes which fail to draw a distinction between punishing abstract teaching of using force and violence and punishing the preparation of a group for violent action is a violation of the constitutional guarantees of free speech). 46 See generally Valentine v. Chrestensen, 316 U.S. 52 (1942) (deciding whether an ordinance forbidding distribution of commercial advertising in the streets was an unconstitutional limitation of the freedom of the press and speech), overruled by Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748 (1976); Near v. Minnesota, 283 U.S. 697 (1931) (discussing the constitutionality of a Minnesota law deeming scandalous newspapers a public nuisance). 47 See Near, 283 U.S. at 723 (5-4 decision) (Butler, J., dissenting). 48 Id. at (majority opinion). 49 Id. at

9 2015] TERRIFYING TRADEMARKS 221 operations. 50 The United States Supreme Court divided 5-4 on two related issues: (1) whether the injunctive remedy constituted a prior restraint in violation of the original intent of the First Amendment (since 1925 applicable to the states through the Fourteenth Amendment); and (2) whether scandalous accusations (in this case, against a public official), were protected by the First Amendment against public law restraint (as distinct from private libel damages). 51 The majority answered yes to both questions and therefore held the state statute unconstitutional. 52 The dissent, however, offered four votes for the propositions that the law was not an invalid prior restraint, and, important for our purposes here, that the First Amendment did not protect scandalous accusations against public officials from public law regulation or sanction. 53 In crafting the dissent, Justice Butler relied upon Justice Joseph Story s Commentaries on the Constitution. 54 Although first published in 1833, Justice Butler quoted the Commentaries as though it were the applicable law of The view Justice Butler relied upon was that holding the First Amendment to protect an absolute right to speak, or write, or print whatever he might please, without any responsibility, public or private was a supposition too wild to be indulged by any rational man. 56 The right to free expression, to Justice Butler and the other dissenters, is that every man shall be at liberty to publish what is true, with good motives and for justifiable ends. 57 The right of free expression must give way, therefore, to a concept of civility 50 Id. at See id. at 713, (indicating that [t]he question is whether a statute authorizing such proceedings in restraint of publication is consistent with the conception of liberty of the press as historically conceived and guaranteed, and that public officers do not find remedies under proceedings restraining newspaper publication). 52 Id. at , See id. at (Butler, J., dissenting) ( The business and publications unquestionably constitute an abuse of the right of free press.... It is fanciful to suggest... the granting or enforcement of the decree authorized by this statute to prevent further publication of malicious, scandalous and defamatory articles and the previous restraint.... ). 54 Id. at Id. at Id. at 732 (quotation omitted). 57 Id. at 733 (quotation omitted).

10 222 ALB. L.J. SCI. & TECH. [Vol that is bound up with the ideals of the early American republic. 58 Chief Justice Hughes and the majority disagreed. 59 The majority, following Madison s 1798 response to the Sedition Act, recognized that even a more serious public evil would be caused by authority to prevent publication [of scandalous material]. 60 Moreover, if the First Amendment was not intended to protect the expression of those who would offend others with their expressions, it would be robbed of force and be reduced to a mere form of words. 61 Thus, even uncivil, scandalous and disparaging speech would be afforded protection. 62 As of five years before passage of the Lanham Act, Congress didn t have to worry about the First Amendment protecting commercial speech at all. 63 In Valentine v. Chrestensen, the private owner of a former Navy submarine brought his ship to New York City. 64 Once there, he distributed handbills advertising his submarine on the streets of the city, and was thereafter restrained by the police. 65 The handbills he was distributing contained a protest against a city ordinance restricting the distribution of handbills on one side and an advertisement of his submarine on the other. 66 He was charged with violating a city sanitary code for distributing leaflets. 67 In upholding the charges against him, the Supreme Court noted that the Constitution imposes no... restraint on government as respects purely commercial advertising. 68 Instead, the regulation of commercial speech was considered purely the prerogative of legislative 58 See id. (quotation omitted) (stating that the freedom of expression must have some reasonable limitation if the values of the Republic are to be upheld). 59 See id. at 718 (majority opinion) (noting the importance of the freedom of the press, and that some degree of abuse is inseparable from this freedom). 60 Id. at Id. 62 Id. at See Valentine v. Chrestensen, 316 U.S. 52, 54 (1942) (finding that the Constitution imposes no restraint on government when it comes to regulating commercial speech), overruled by Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748 (1976). 64 Valentine, 316 U.S. at Id. at Id. 67 Id. 68 Id. at 54.

11 2015] TERRIFYING TRADEMARKS 223 decision. 69 Since 1946, although the opportunity has arisen, Congress has not revisited the Lanham Act in order to correct any First Amendment deficiencies with 2(a). 70 In considering the definition of scandalous and immoral, the Federal Circuit has explicitly refused to apply the obscenity standards 71 from the Supreme Court to Lanham Act registrations on the grounds that the Act does not itself use the word obscenity. 72 Instead, the Federal Circuit says that the definition of scandalous must be derived from the ordinary and common meaning of that term, the sources of which standard arise from the dictionary meaning as well as, somewhat circularly, the decisions of the PTO board itself. 73 Interestingly, although the term vulgar also does not appear in the Lanham Act s language prohibiting scandalous marks, the Federal Circuit has held that the PTO may prove scandalousness by establishing that a mark is vulgar. 74 The Federal Circuit further distinguishes the obscenity cases from immoral and scandalous trademarks by noting that a trademark can be displayed prominently in the public, and will not be concealed within a publication. 75 Although this distinction is not apparently within the obscenity jurisprudence of the Supreme Court, the Federal Circuit has used it in an effort to justify sidestepping possible restraints that would be imposed by the First Amendment. 76 The disparagement prohibition, although with less support in the case law, has received a similarly breezy treatment of its 69 Id MCCARTHY, supra note 24, 5:5 :11 (providing a summary of the various amendments to the Lanham Act). 71 The standard for determining what speech is obscene is governed by the Miller Test: (a) whether the average person, applying contemporary community standards would find that the work, taken as a whole, appeals to the prurient interest,... (b) whether the work depicts or describes, in a patently offensive way, sexual conduct specifically defined by the applicable state law; and (c) whether the work, taken as a whole, lacks serious literary, artistic, political, or scientific value. Miller v. California, 413 U.S. 15, 24 (1973) (internal quotation marks and citations omitted). 72 In re McGinley, 660 F.2d 481, 485 (C.C.P.A. 1981). 73 Id. 74 In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012). 75 McGinley, 660 F.2d at Id. at 484.

12 224 ALB. L.J. SCI. & TECH. [Vol First Amendment implications. Recently, the Federal Circuit had rare occasion to issue a decision around 2(a) s prohibition on disparaging remarks. 77 The mark in question, STOP THE ISLAMISATION OF AMERICA, was being used by noted anti- Muslim activist Pamela Geller. 78 The purpose of the group is to educate Americans about Islamic domination and expansionism. 79 The TTAB denied her the right to federally register the mark on the grounds that it was disparaging to Muslims. 80 On appeal, Spencer and Geller argued that there was insufficient evidence to justify that the mark was disparaging. 81 Since no case law existed on which to resolve the dispute, both sides and the Federal Circuit agreed that In re Lebanese Arak Corp., a matter from the TTAB, provided the necessary framework for analysis. 82 Pursuant to In re Lebanese Arak Corp, the analysis inquires: (1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. 83 The TTAB found that there existed both a religious and a political meaning for the term Islamisation. 84 The religious meaning referred to the conversion to or conformance with the Islamic religion, and the political meaning referred to the sectarianization of a political society through efforts to make [it] subject to Islamic law. 85 In support of its position the TTAB 77 See In re Geller, 751 F.3d 1355, 1362 (Fed. Cir. 2014) (affirming the TTAB s refusal to register a mark as disparaging matter under 2(a)). 78 Id. at Gail Sullivan, Court Denies Trademark Protection to Anti-Muslim Group, WASH. POST, May 14, 2014, wp/2014/05/14/court-denies-trademark-to-anti-muslim-group/. 80 Geller, 751 F.3d at Id. at Id. 83 Id. (quoting In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215, 1217 (T.T.A.B. 2010)). 84 Geller, 751 F.3d at Id. (internal quotation marks omitted).

13 2015] TERRIFYING TRADEMARKS 225 relied upon three sources of information: an online dictionary, the Appellants anti-islamisation website, and comments of readers on the Appellant s web site. 86 The Appellants, on the other hand, contended that the sole use of the term in public referred to the political and military process [of] replacing civilian laws with Islamic religious law. 87 Indeed, they asserted that the whole purpose of their website was to oppose the militant tactics of the Muslim Brotherhood. 88 The TTAB did not ultimately share the view of the Appellants, and the Federal Circuit affirmed. 89 In supporting the reasoning of the TTAB, The Federal Circuit cited a particular essay on Appellant s web site that provides tips for opposing huge monster mosque[s] proposed in people s communities. 90 The court noted that the essay in question addressed both political opinions regarding the Muslim Brotherhood, as well as merely religious opinions of Islam generally. 91 The Federal Circuit also concluded that the cited essay advocates suppression of the Muslim religion as well as the mosques that serve as the center of faith. 92 The TTAB relied upon another article on Appellant s website describing a controversial bus ad in Florida that was taken out by Appellants in order to counter-act pro-islamic advertising that invited people to convert to Islam. 93 In the opinion of the Federal Circuit, that article was purely religious and without political content because it offered people a help line when leaving the Islamic religion in order to avoid retaliation. 94 The TTAB also relied upon anonymous comments on articles on the Appellant s web site in order to gauge the public s reaction to the Appellant s mark. 95 In the opinion of the Federal Circuit, the first prong of In re Lebanese Arak Corp was therefore satisfied by establishing that the challenged mark had the above religious and political meanings. 96 In analyzing the core of the second prong whether 86 Id. at Id. (internal quotation marks omitted). 88 Id. at Id. at Id. at Id. at Id. at Id. at Id. at Id. at Id. at

14 226 ALB. L.J. SCI. & TECH. [Vol the meanings established in prong one were disparaging the Court determined first that both definitions would be applicable to all American Muslims. 97 Further, because the mark wanted to STOP the Islamisation of America, it set[] a negative tone and signals that Islamization is undesirable and is something that must be brought to an end in America. 98 Because Appellants did not clearly spell out that they were only against terrorism, and not against Islam in general, the mark was therefore disparaging. 99 Central to this opinion was the fact that Appellants did not prove that violence was a central requirement of the political aspect of Islamisation. 100 Therefore, since violence was not a facially necessary component of the political ambition of converting civil regimes into Shariah regimes, the mark improperly cast aspersions on Muslims. 101 Since the Appellants conceded at oral argument that their mark would be offensive to Muslims in the purely religious meaning, 102 the Federal Circuit proceeded with its analysis under the political meaning. 103 Leaving aside whether the political position of the Appellants is a good or worthy one, it is quite remarkable that the Court felt at liberty to parse political arguments in order to determine whether the very content of a political message was appropriate or correct. In no other area of federal jurisprudence would a court feel at liberty to determine whether political speech was accurate enough to warrant protection or federal recognition. Even in cases of defamation, a higher standard is typically applied when dealing with public figures or matters of public concern, where the burden rests upon the injured public figure to demonstrate that actual malice existed when a defendant propounded a known falsehood Id. at Id. at 1361 (internal quotation marks omitted). 99 Id. at The term disparagement was defined as dishonor[ing] by comparison with what is inferior, slight[ing], deprecat[ing], degrad[ing], or affect[ing] or injur[ing] by unjust comparison. Id. at 1358 (quoting Pro Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 124 (D.D.C. 2003)) (internal quotation marks omitted). 100 Geller, 751 F.3d at Id. 102 Id. at Id. at See W. PAGE KEETON ET AL., PROSSER AND KEETON ON THE LAW OF TORTS 806 (5th ed. 1984) (stating that a public official or a public figure must establish with clear and convincing clarity that a defamatory statement was

15 2015] TERRIFYING TRADEMARKS 227 However, when speaking on political matters through a trademark, the Federal Circuit would have the situation reversed. Under the reasoning of In re Geller, the burden rests upon the registering party to prove the entire factual basis of any political opinion expressed through its mark. 105 Even more curious, the Federal Circuit felt no obligation at all to provide even a small acknowledgement of the potential implications to the First Amendment of its decision. While the Federal Circuit ignored or missed the First Amendment implications of such a decision, the TTAB at least acknowledged that there was some concern on that front. 106 Much as in the context of 2(a) s scandalous prohibition, the TTAB found that our decision does not impact [applicants ] rights under the First Amendment because [t]he refusal to register applicants mark does not impede their right to use the mark. As such, it imposes no restraint or limit on their ability to communicate ideas or express points of view Thus, even though their national reach would be restricted by being excluded from the franchise offered through the Lanham Act, there was no complete prohibition from using the mark in commerce. 108 As noted below in Part III, the Unconstitutional Conditions doctrine presents quite a different perspective on the First Amendment implications of 2(a) s prohibitions. 109 III. THE UNCONSTITUTIONAL CONDITIONS DOCTRINE The Unconstitutional Conditions Doctrine emerged over the course of the twentieth century. 110 In essence, the doctrine holds published with knowledge of its falsity or recklessly unless the statement relates to aspects of the person s life that does not relate to a legitimate public interest ). 105 See Geller, 751 F.3d at (explaining that the appellants could not provide a factual basis for their political opinion that spreading Islamic law requires violence). 106 In re Geller & Spencer, No , 2013 WL , at *11 (T.T.A.B. Feb. 7, 2013). 107 Id. 108 Id. 109 See discussion infra Part III. 110 See generally Brian T. Hodges, Reexamining the Doctrine of Unconstitutional Conditions, PAC. LEGAL FOUND. (May 29, 2012), (providing a brief history of the Unconstitutional Conditions

16 228 ALB. L.J. SCI. & TECH. [Vol that the government is not allowed to require that an individual surrender a constitutionally guaranteed right in exchange for a government benefit. 111 However, this doctrine did not fully emerge in constitutional jurisprudence until after the period in which the Lanham Act was drafted. 112 Instead, the prior era was characterized by the rights-privileges distinction. 113 The rightsprivileges distinction is well captured in a famous holding of Oliver Wendell Holmes, 114 who would become Chief Justice of the Massachusetts Supreme Judicial Court seven years after the holding. In McAuliffe v. City of New Bedford, a police officer sued for reinstatement after he was dismissed for his participation in a political organization. 115 In dismissing the case, Chief Justice Holmes held that [t]he petitioner may have a constitutional right to talk politics, but he has no constitutional right to be a policeman. 116 By contrast, the Supreme Court has very recently reaffirmed the proposition that the government may not deny a benefit to a person because he exercises a constitutional right. 117 Although this principle contains exceptions, as will be discussed below, it has been applied to a wide variety of situations, including refusal to renew teaching contracts over First Amendment-protected speech acts, and infringement of the right to travel by refusing to adequately extend healthcare benefits to sick persons who had Doctrine throughout the twentieth century). 111 See, e.g., Koontz v. St. Johns River Water Mgmt. Dist., 133 S. Ct. 2586, 2591 (2013) ( [A] unit of government may not condition the approval of a landuse permit on the owner s relinquishment of a portion of property.... ). 112 See In re Tam, No , 2015 WL , at *6 (Fed. Cir. Apr. 20, 2015) (dictum) (noting that First Amendment jurisprudence on the unconstitutional conditions doctrine... has evolved since the McGinley decision and therefore the constitutionality of 2(a) must be duly considered), reh g granted, 600 F. App x 775 (Fed. Cir. Apr. 27, 2015); see also Richard A. Epstein, Foreword, Unconstitutional Conditions, State Power, and the Limits of Consent, 102 HARV. L. REV. 4, 104 (1986) (declaring the unconstitutional conditions doctrine an emergent doctrine of the post-1937 era of constitutional jurisprudence). 113 See William W. Van Alstyne, The Demise of the Right-Privilege Distinction in Constitutional Law, 81 HARV. L. REV. 1439, 1441, 1463 (1968) (describing rights-privileges distinction decisions of the 1950 s and giving an example of departure from the rights-privileges tradition in 1960 s jurisprudence). 114 McAuliffe v. City of New Bedford, 29 N.E. 517, (Mass. 1892). 115 Id. at Id. 117 Koontz v. St. Johns River Water Mgmt. Dist. 133 S. Ct. 2586, 2594 (2013).

17 2015] TERRIFYING TRADEMARKS 229 not been residents of a county for at least a year. 118 Mitchell Berman offers an interesting view of the Unconstitutional Conditions Doctrine. 119 On his account, the wrong that occurs when the government withholds a benefit that affects a constitutional right is a wrong of coercion. 120 Berman defines coercion for these purposes as the wrong of manipulating a person to act in a certain way by placing wrongful pressure upon her alternatives. 121 Berman synthesizes his view of the Unconstitutional Conditions Doctrine as follows: Every constitutional right entails a claim-right that the state not penalize the exercise (or nonwaiver) of the constitutional right itself in the sense of imposing (or allowing to obtain) consequences upon the right-holder that are adverse relative to the consequences that the state would impose (or allow to obtain) but for the state s purpose in having the right-holder experience the consequences as disagreeable. That is largely what it means to have a constitutional right. It follows that the withholding of what seems to be a benefit is in fact a penalty and hence is unconstitutional if undertaken for the purpose of punishing or discouraging exercise of a right. And a conditional proposal is coercive (in the constitutional sense) if the state threatens to impose a penalty for the refusal to waive a constitutional right. 122 Although the Supreme Court continues to rely upon the Unconstitutional Conditions Doctrine in protecting constitutional rights, 123 such protection is not without limitation. For instance, in Garcetti v. Ceballos, the Supreme Court held that when 118 See Perry v. Sindermann, 408 U. S. 593, (1972) (discussing free speech rights in the employment context); Mem l Hosp. v. Maricopa Cnty., 415 U. S. 250, (1974) (holding that a failure to extend healthcare benefits to temporary residents impinges upon the right to travel); see also Goldberg v. Kelly, 397 U.S. 254, (1970) (finding that welfare recipients had some interest in the welfare benefits that required Due Process proceedings even though welfare was merely a government benefit and not a right), superseded by statute, Personal Responsibility and Work Opportunity Reconciliation Act of 1996, Pub. L. No , 110 Stat. 2105, as recognized in State ex rel. K.M. v. W. Va. Dep t of Health & Human Res., 575 S.E.2d 393 (W. Va. 2002). 119 Mitchell N. Berman, Commercial Speech and the Unconstitutional Conditions Doctrine: A Second Look at The Greater Includes the Lesser, 55 VAND. L. REV. 693 (2002). 120 Id. at Id. 122 Id. at See Garcetti v. Ceballos, 547 U.S. 410, 417 (2006) (explaining that public employees do not surrender all First Amendment rights due to their employment as such).

18 230 ALB. L.J. SCI. & TECH. [Vol public employees make statements pursuant to their official duties, the employees are not speaking as citizens for First Amendment purposes, and the Constitution does not insulate their communications from employer discipline. 124 In other words, while the government may not deny a benefit (such as governmental employment) to penalize the exercise of a constitutional right, the concept of a constitutional right is itself subject to definition and, in Garcetti, contraction in certain contexts. 125 The Garcetti limitation reflects the Court majority s desire to support the managerial authority of governmental employers. By contrast, the Supreme Court has not made any moves that would suggest that private citizens interacting with the government as non-employees would sometimes find themselves required to surrender a constitutional right for a government benefit. Indeed, the recent Koontz v. St. Johns River Water Mgmt. Dist. case, 126 involving the property rights of landowners, 127 suggests the contrary. In Koontz, the Supreme Court held that the Nollan/Dolan nexus and rough proportionality requirement when a government placed conditions on land use must be satisfied even when a permit is denied. 128 In reaching this decision, the Supreme Court relied upon the Unconstitutional Conditions Doctrine, holding that so long as [in the land use context] there is a nexus and rough proportionality between the property that the government demands and the social costs of the applicant s proposal, the conditions will be constitutional. 129 Otherwise, the conditions will fail scrutiny. 130 A. Trademarks, the First Amendment, and Unconstitutional Conditions The PTO and the Federal Circuit Court of Appeals have not yet 124 Id. at See id. (analyzing contraction in the context of a public employee s speech) S. Ct (2013). 127 See id. at 2588 (discussing a landowner s intention to develop property on neighboring wetlands). 128 Id. at Id. at See id. (explaining that the government may not leverage its legitimate interest in mitigation to pursue governmental ends that lack an essential nexus and rough proportionality to those impacts ).

19 2015] TERRIFYING TRADEMARKS 231 seen fit to apply the Unconstitutional Conditions Doctrine to trademark law. 131 Under 2(a) of the Lanham Act, trademark owners are barred from registering scandalous, immoral or disparaging marks. 132 The Federal Circuit has refused to even entertain the notion that trademarks may be a protected form of speech, and that 2(a) is an unconstitutional prior restraint. 133 Take, for example, In re McGinley, a seminal case on the scandalous and immoral prohibitions in 2(a). 134 In McGinley, the refused mark in question, two naked people embracing, was used to represent social club services helping swingers to connect. The trademark owner s challenge was that 2(a) is void for vagueness because there is no satisfactory definition of immoral or scandalous and, as in First Amendment obscenity cases, there is no basis on which to establish a national standard. The court dismissed First Amendment concerns out of hand, holding that since [n]o conduct is proscribed, and no tangible form of expression is suppressed, there was no affect on the trademark owner s speech rights. 135 In failing to even consider doctrines such as unconstitutional conditions or Equal Protection, they relied on a previous trademark case, Holiday Inn v. Holiday Inns, Inc., 136 for the proposition that since the core 131 See In re McGinley, 660 F.2d 481, 484 (C.C.P.A 1981) (refusing to entertain the notion that trademarks may be a protected form of speech). 132 Lanham Act, Pub. L. No , 2(a), 60 Stat. 427, 428 (1946) (codified as amended at 15 U.S.C. 1052(a) (2012)). Notably, the Federal Circuit has read this section such that scandalous can be interpreted as vulgar as defined in the dictionary. See In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012) ( [W]here it is clear from dictionary evidence that the mark as used by the applicant in connection with the products described in the application invokes a vulgar meaning to a substantial composite of the general public, the mark is unregistrable. ) (internal brackets omitted). Obscenity, as it has been delineated as an exception to the First Amendment freedom of speech, however, has been explicitly rejected as the standard for scandalousness. See In re McGinley, 660 F.2d 481, 485 n.9 (C.C.P.A. 1981) (noting that the threshold for objectionable matter under 2(a) is lower for what can be described as scandalous than for obscene ); see also note 104 and accompanying text (providing a definition of the term disparaging ). 133 See McGinley, 660 F.2d at 482 (affirming a rejection of the appellant s application on the basis that it comprises immoral... or scandalous matter, and is therefore not a protected form of speech). 134 Id. 135 Id. at F.2d 312 (C.C.P.A. 1976).

20 232 ALB. L.J. SCI. & TECH. [Vol right of a trademark registration is the ability to exclude others from using that mark, and such a right is created via use and not registration, the failure to register a mark could not affect the ownership or use of a mark. 137 Further, the McGinley court was of the opinion that [w]hat is denied are the benefits provided by the Lanham Act which enhance the value of a mark, and that the appellant still had legal recourse under state common law. 138 Therefore, so the court in McGinley reasoned, since the right to use the mark is not actually abridged, no expression is abridged. 139 Perhaps a key insight into the Federal Circuit s dismissive attitude toward the First Amendment analysis is that it regarded the statutory rights granted as merely procedural and not substantive. 140 Although it did not elaborate, ostensibly it is talking about the various benefits of trademark registration enforcement such as presumptive use nationwide and damages, and it is not considering them as a total package that provides a competitive advantage to trademark owners, as well as a means of nationwide expression. 141 If one did take this view, the entitlements of federal trademark registration could be shunted into the Garcetti exception: regulating federally registered trademarks is like regulating speech when you are an employee of the federal government. However, this argument attempts to cover too much ground, and ends up echoing much more of the early twentieth century rightsprivileges jurisprudence of Justice Holmes. 142 As will be discussed, infra, trademark registration is the federal registration of a use-based, pre-federal registration property right that has speech implications far outside of any mere 137 McGinley, 660 F.2d at Id. at 486 n Id. at 484. The Federal Circuit and the PTO continue to rely on this position in refusing registrations under 2(a). See, e.g., In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012); In re The Boulevard Entm t, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003); In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994). 140 McGinley, 660 F.2d at Also consider the position taken in MCCARTHY ON TRADEMARKS: [T]here is little doubt that Congress, in passing the Lanham Act, intended it to grant substantive as distinguished from merely procedural rights in trademarks. 3 MCCARTHY, supra note 24, 19: See supra notes and accompanying text.

21 2015] TERRIFYING TRADEMARKS 233 regulatory or ministerial interest. 143 In McCauliffe, the police officer before Justice Holmes lost his job. 144 This is an obviously tangible harm. The Federal Circuit dismisses owners of immoral or disparaging trademarks on the ground that no actual harm is done they still own the mark, and, as far as the Federal Circuit is concerned, no speech has been suppressed. 145 There are real advantages to trademark registration, as discussed in Part II. 146 For instance, businesses and individuals enjoy a nationwide recognition of their presence and can vindicate their interests in federal courts. 147 Without the federal registration that is presumptively supplied to marks that are not immoral or scandalous, an individual can find himself attempting to protect his interests in a mark in the courts of every state in which he does business. 148 It is important also to make a distinction between a refusal to acknowledge a copyright federally, and the sorts of nonprohibitory interests protected in other First Amendment contexts. For example in National Endowment of the Arts v. Finley, 149 a refusal to award an arts grant was not equated with censorship of the artist. 150 The Court did acknowledge, however, that were the legislation in question aimed at suppressing a particular viewpoint, it would violate the First Amendment. 151 Interestingly, Respondents in Finley argued that the statute in 143 See discussion infra Part III.D. Notably, state common law or statutory rights are not a condition precedent to federal registration. 3 MCCARTHY, supra note 24, 19:8. However, the rights to marks arise out of an actual use, which is then later recognized as the basis for a federal registration. Id. Thus, federal and state protections of trademarks differ, but the right to a trademark under either system flows from the use of the mark that occurs before the government deems to recognize the mark. 144 McAuliffe v. City of New Bedford, 29 N.E. 517, 517 (Mass. 1892). 145 McGinley, 660 F.2d at See Lanham Act, Pub. L. No , 33, 60 Stat. 427, (1946) (codified as amended at 15 U.S.C (2012)) (discussing benefits of federally registered trademarks). 147 See id. 21, 60 Stat. at 325 (codified as amended at 15 U.S.C (2012)) (allowing those with registered trademarks to bring appeals before the U.S. Court of Appeals for the Federal Circuit, thereby avoiding having to litigate in state courts). 148 Id U.S. 569 (1998). 150 Id. at Id. at