The Supreme Court's Matal v. Tam decision, ruling the government must grant a trademark to the band called the Slants, offered little guidance for future legal cases. Archer & Greiner's John Connell, who argued Tam before the court, weighs in on how the court's upcoming decision on a designer's efforts to trademark his design line could clarify Tam.

The U.S. Supreme Court ruled in 2017 in Matal v. Tam, that the disparagement clause of federal trademark law was an unconstitutional violation of the Free Speech Clause of the First Amendment, offending "a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."

Despite the elegant simplicity of this holding, the reasoning of the court is not a model of clarity, and offers little guidance as to the legal standards governing future cases. The court's decision in Iancu v. Brunetti could change that.

The issue in Tam was whether denial of trademark registration of "Slants" as disparaging to Asians is constitutionally permissible. The decision, written by Justice Alito, systematically addressed each of the contentions raised by the parties, but there was little consensus on the salient issues.

Of course, the overwhelming majority, not surprisingly, agreed on the noncontroversial sections on case background and constitutional avoidance. They also were unanimous on the conclusion that registration of a trademark does not ipso facto convert that mark into government speech; in fact, the government speech doctrine was "susceptible to dangerous misuse", and any such argument was "a huge and dangerous extension of the government speech doctrine."

Supreme Court Ducks

But thereafter the court fractured. Four Justices opined that the trademark registration did not entail any government financial subsidy of speech or constitute a government program conferring non-cash benefits serving important governmental interests, where some content- or speaker-based restrictions are permitted.

They then made passing reference to the "limited public forum" analogy, to underscore the prohibition against viewpoint discrimination. In that respect, "Giving offense is a viewpoint." At that point, it appeared that the court would embark on an analysis of the applicable legal standard.

Instead, the court ducked.

While acknowledging the parties' dispute as to whether a trademark is deemed commercial speech subject to intermediate scrutiny or expressive speech subject to strict scrutiny, the court stated, "We need not resolve this debate ... because the disparagement clause cannot withstand even [intermediate scrutiny]."

Under this analysis, the disparagement clause was nothing more than a "happy-talk clause". At the same time, the court diffidently admitted that "as this case illustrates, trademarks often have an expressive content" and "convey a message", rendering "the line between commercial and non-commercial speech ... not always clear".

The court was content to leave it there. The four-justice concurrence, authored by Justice Kennedy, was not so content.

Justice Kennedy agreed with the court's discussion of viewpoint discrimination, but noted that "the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties."

Indeed, the disparagement clause "singled out a subset of messages for disfavor based on the views expressed, which was "the essence of viewpoint discrimination." "By mandating positivity, the law here might silence dissent and distort the marketplace of ideas." This was tantamount to government censorship, which therefore invoked "heightened scrutiny".

Separately, Justice Thomas wrote a concurrence to reiterate his belief that strict scrutiny was appropriate, regardless of whether the speech at issue is commercial or noncommercial.

In the wake of Tam, it remains unsettled whether marks, with or without expressive content, are to be afforded constitutional protection under intermediate or strict scrutiny. Though there was ample existing legal precedent favoring strict scrutiny—even as to content, let alone viewpoint—the court simply left this question open.

Enter Brunetti.

The issue in Brunetti is whether denial of trademark registration of "FUCT" as immoral and scandalous is constitutionally permissible. Similar to Tam, Brunetti involves 15 U.S.C. §1052(a) of the Lanham Act, but implicates the immoral and scandalous matter clause, not the disparagement clause.

While the analysis between Tam and Brunetti has many parallels, this case is slightly different because it is not easily characterized as conveying a non-commercial political message, but can more accurately be said to constitute a form of commercial speech.

Law Not a Morality Code

Nonetheless, essential to this analysis is the legal proposition that the law is not a morality code: offensive speech is still protected speech. It is not a listener's perception of speech that controls whether that speech is protected. That can never be the case because the audience of listeners is so diverse and audiences are so varied that the listeners' perspective can never control the speaker's message without infringing speech.

Even though someone might be offended by FUCT and its apparent meaning, it could in fact be understood to be simply an acronym for a phrase that the author of that term intended, i.e., "Friends U Can't Trust". So putting aside any listener's perception—whether accurate or inaccurate, offended or not—there is no legal justification to deny constitutional protection to the message of the speaker. If "giving offense is a viewpoint," then the outcome of Brunetti seems foreordained.

As was said of Tam, so it can be said of Brunetti: "A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government's benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society."

Inasmuch as Tam did not settle the question of the proper legal standard governing speech in the trademark realm, Brunetti may be able to definitively determine whether the strict scrutiny analysis will apply to forms of expression in trademarks that are protected under the First Amendment, whether deemed commercial or noncommercial speech.

At the end of oral argument of Tam in 2017, Justice Ginsberg asked, "Would you say the same thing about a scandalous mark? Would [denial of registration] be equally impermissible?", to which I succinctly replied, "I think that conclusion is inevitable." Clearly, Justice Ginsberg was looking over the court's shoulder.

Now we will see just how inevitable that conclusion is.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.