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SUPREME COURT OF THE UNITED STATES
_________________
No. 15–1293
_________________
JOSEPH MATAL, INTERIM DIRECTOR, UNITED STATES
PATENT AND TRADEMARK OFFICE, PETITIONER
v. SIMON SHIAO
TAM
on writ of certiorari to the united states
court of appeals for the federal circuit
[June 19, 2017]
Justice Alito announced the judgment of the
Court and delivered the opinion of the Court with respect to Parts
I, II, and III–A, and an opinion with respect to Parts
III–B, III–C, and IV, in which The Chief Justice,
Justice Thomas, and Justice Breyer join.
This case concerns a dance-rock band’s
application for federal trademark registration of the band’s
name, “The Slants.” “Slants” is a
derogatory term for persons of Asian descent, and members of the
band are Asian-Americans. But the band members believe that by
taking that slur as the name of their group, they will help to
“reclaim” the term and drain its denigrating force.
The Patent and Trademark Office (PTO) denied the
application based on a provision of federal law prohibiting the
registration of trademarks that may “disparage
. . . or bring . . . into contemp[t] or
disrepute” any “persons, living or dead.” 15
U. S. C. §1052(a). We now hold that this provision
violates the Free Speech Clause of the First Amendment. It offends
a bedrock First Amendment principle: Speech may not be banned on
the ground that it expresses ideas that offend.
I
A
“The principle underlying trademark
protection is that distinctive marks—words, names, symbols,
and the like—can help distinguish a particular
artisan’s goods from those of others.”
B&B
Hardware, Inc. v.
Hargis Industries, Inc., 575
U. S. ___, ___ (2015) (slip op., at 3); see also
Wal-Mart
Stores, Inc. v.
Samara Brothers, Inc., 529 U. S.
205, 212 (2000) . A trademark “designate[s] the goods as the
product of a particular trader” and “protect[s] his
good will against the sale of another’s product as
his.”
United Drug Co. v.
Theodore Rectanus Co.,
248 U. S. 90, 97 (1918) ; see also
Hanover Star Milling
Co. v.
Metcalf, 240 U. S. 403 –413 (1916). It
helps consumers identify goods and services that they wish to
purchase, as well as those they want to avoid. See
Wal-Mart
Stores,
supra, at 212–213;
Park ’N Fly,
Inc. v.
Dollar Park & Fly, Inc., 469 U. S. 189,
198 (1985) .
“[F]ederal law does not create
trademarks.”
B&B Hardware,
supra, at ___
(slip op., at 3). Trademarks and their precursors have ancient
origins, and trademarks were protected at common law and in equity
at the time of the founding of our country. 3 J. McCarthy,
Trademarks and Unfair Competition §19:8 (4th ed. 2017)
(hereinafter McCarthy); 1
id., §§5:1, 5:2, 5:3;
Pattishal, The Constitutional Foundations of American Trademark
Law, 78 Trademark Rep. 456, 457–458 (1988); Pattishall, Two
Hundred Years of American Trademark Law, 68 Trademark Rep. 121,
121–123 (1978); see
Trade-Mark Cases, 100 U. S.
82, 92 (1879) . For most of the 19th century, trademark protection
was the province of the States. See
Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U. S. 763 –782 (1992)
(Stevens, J., concurring in judgment);
id., at 785 (Thomas,
J., concurring in judgment). Eventually, Congress stepped in to
provide a degree of national uniformity, passing the first federal
legislation protecting trademarks in 1870. See Act of July 8, 1870,
§§77–84, 16Stat. 210–212. The foundation of
current federal trademark law is the Lanham Act, enacted in 1946.
See Act of July 5, 1946, ch. 540, 60Stat. 427. By that time,
trademark had expanded far beyond phrases that do no more than
identify a good or service. Then, as now, trademarks often
consisted of catchy phrases that convey a message.
Under the Lanham Act, trademarks that are
“used in commerce” may be placed on the
“principal register,” that is, they may be federally
registered. 15 U. S. C. §1051(a)(1). And some marks
“capable of distinguishing [an] applicant’s goods or
services and not registrable on the principal register
. . . which are in lawful use in commerce by the owner
thereof” may instead be placed on a different federal
register: the supplemental register. §1091(a). There are now
more than two million marks that have active federal certificates
of registration. PTO Performance and Accountability Report, Fiscal
Year 2016, p. 192 (Table 15),
https://www.uspto.gov/sites/default/files/documents/USPTOFY16PAR.pdf
(all Internet materials as last visited June 16, 2017). This system
of federal registration helps to ensure that trademarks are fully
protected and supports the free flow of commerce. “[N]ational
protection of trademarks is desirable,” we have explained,
“because trademarks foster competition and the maintenance of
quality by securing to the producer the benefits of good
reputation.”
San Francisco Arts & Athletics, Inc.
v.
United States Olympic Comm., 483 U. S. 522, 531
(1987) (internal quotation marks omitted); see also
Park
’N Fly, Inc.,
supra, at 198 (“The Lanham Act
provides national protection of trademarks in order 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”).
B
Without federal registration, a valid
trademark may still be used in commerce. See 3 McCarthy §19:8.
And an unregistered trademark can be enforced against would-be
infringers in several ways. Most important, even if a trademark is
not federally registered, it may still be enforceable under
§43(a) of the Lanham Act, which creates a federal cause of
action for trademark infringement. See
Two Pesos,
supra, at 768 (“Section 43(a) prohibits a broader
range of practices than does §32, which applies to registered
marks, but it is common ground that §43(a) protects qualifying
unregistered trademarks” (internal quotation marks and
citation omitted)).[
1]
Unregistered trademarks may also be entitled to protection under
other federal statutes, such as the Anticybersquatting Consumer
Protection Act, 15 U. S. C. §1125(d). See 5 McCarthy
§25A:49, at 25A–198 (“[T]here is no requirement
[in the Anticybersquatting Act] that the protected
‘mark’ be registered: unregistered common law marks are
protected by the Act”). And an unregistered trademark can be
enforced under state common law, or if it has been registered in a
State, under that State’s registration system. See 3
id., §19:3, at 19–23 (explaining that
“[t]he federal system of registration and protection does not
preempt parallel state law protection, either by state common law
or state registration” and “[i]n the vast majority of
situations, federal and state trademark law peacefully
coexist”);
id., §22:1 (discussing state trademark
registration systems).
Federal registration, however, “confers
important legal rights and benefits on trademark owners who
register their marks.”
B&B Hardware, 575
U. S., at ___ (slip op., at 3) (internal quotation marks
omitted). Registration on the principal register (1) “serves
as ‘constructive notice of the registrant’s claim of
ownership’ of the mark,”
ibid. (quoting 15
U. S. C. §1072); (2) “is ‘prima facie
evidence of the validity of the registered mark and of the
registration of the mark, of the owner’s ownership of the
mark, and of the owner’s exclusive right to use the
registered mark in commerce on or in connection with the goods or
services specified in the certificate,’ ”
B & B Hardware, 575 U. S. ___ (slip op.,
at 3) (quoting §1057(b)); and (3) can make a mark
“ ‘incontestable’ ” once a mark
has been registered for five years,”
ibid. (quoting
§§1065, 1115(b)); see
Park ’N Fly, 469
U. S., at 193. Registration also enables the trademark holder
“to stop the importation into the United States of articles
bearing an infringing mark.” 3 Mc-Carthy §19:9, at
19–38; see 15 U. S. C. §1124.
C
The Lanham Act contains provisions that bar
certain trademarks from the principal register. For example, a
trademark cannot be registered if it is “merely descriptive
or deceptively misdescriptive” of goods, §1052(e)(1), or
if it is so similar to an already registered trademark or trade
name that it is “likely . . . to cause confusion,
or to cause mistake, or to deceive,” §1052(d).
At issue in this case is one such provision,
which we will call “the disparagement clause.” This
provision prohibits the registration of a trademark “which
may disparage . . . persons, living or dead,
institutions, beliefs, or national symbols, or bring them into
contempt, or disrepute.” §1052(a)
.[
2] This clause appeared in the original
Lanham Act and has remained the same to this day. See §2(a),
60Stat. 428.
When deciding whether a trademark is
disparaging, an examiner at the PTO generally applies a
“two-part test.” The examiner first considers
“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.”
Trademark Manual of Examining Procedure §1203.03(b)(i) (Apr.
2017), p. 1200–150, http://tmep.uspto.gov. “If that
meaning is found to refer to identifiable persons, institutions,
beliefs or national symbols,” the examiner moves to the
second step, asking “whether that meaning may be disparaging
to a substantial composite[
3]
of the referenced group.”
Ibid. If the examiner finds
that a “substantial composite, although not necessarily a
majority, of the referenced group would find the proposed mark
. . . to be disparaging in the context of contemporary
attitudes,” a prima facie case of disparagement is made out,
and the burden shifts to the applicant to prove that the trademark
is not disparaging.
Ibid. What is more, the PTO has
specified that “[t]he fact that an applicant may be a member
of that group or has good intentions underlying its use of a term
does not obviate the fact that a substantial composite of the
referenced group would find the term objectionable.”
Ibid.
D
Simon Tam is the lead singer of “The
Slants.”
In re Tam, 808 F. 3d 1321, 1331 (CA Fed.
2015) (en banc), as corrected (Feb. 11, 2016). He chose this
moniker in order to “reclaim” and “take
ownership” of stereotypes about people of Asian ethnicity.
Ibid. (internal quotation marks omitted). The group
“draws inspiration for its lyrics from childhood slurs and
mocking nursery rhymes” and has given its albums names such
as “The Yellow Album” and “Slanted Eyes, Slanted
Hearts.”
Ibid.
Tam sought federal registration of “THE
SLANTS,” on the principal register, App. 17, but an examining
attorney at the PTO rejected the request, applying the PTO’s
two-part framework and finding that “there is . . .
a substantial composite of persons who find the term in the
applied-for mark offensive.”
Id., at 30. The examining
attorney relied in part on the fact that “numerous
dictionaries define ‘slants’ or
‘slant-eyes’ as a derogatory or offensive term.”
Id., at 29. The examining attorney also relied on a finding
that “the band’s name has been found offensive numerous
times”—citing a performance that was canceled because
of the band’s moniker and the fact that “several
bloggers and commenters to articles on the band have indicated that
they find the term and the applied-for mark offensive.”
Id., at 29–30.
Tam contested the denial of registration before
the examining attorney and before the PTO’s Trademark Trial
and Appeal Board (TTAB) but to no avail. Eventually, he took the
case to federal court, where the en banc Federal Circuit ultimately
found the disparagement clause facially unconstitutional under the
First Amendment’s Free Speech Clause. The majority found that
the clause en-gages in viewpoint-based discrimination, that the
clause regulates the expressive component of trademarks and
consequently cannot be treated as commercial speech, and that the
clause is subject to and cannot satisfy strict scrutiny. See 808
F. 3d, at 1334–1339. The majority also rejected the
Government’s argument that registered trademarks constitute
government speech, as well as the Government’s contention
that federal registration is a form of government subsidy. See
id., at 1339–1355. And the majority opined that even
if the disparagement clause were analyzed under this Court’s
commercial speech cases, the clause would fail the
“intermediate scrutiny” that those cases prescribe. See
id., at 1355–1357.
Several judges wrote separately, advancing an
assortment of theories. Concurring, Judge O’Malley agreed
with the majority’s reasoning but added that the
disparagement clause is unconstitutionally vague. See
id.,
at 1358–1363. Judge Dyk concurred in part and dissented in
part. He argued that trademark registration is a government subsidy
and that the disparagement clause is facially constitutional, but
he found the clause unconstitutional as applied to THE SLANTS
because that mark constitutes “core expression” and was
not adopted for the purpose of disparaging Asian-Americans. See
id., at 1363–1374. In dissent, Judge Lourie agreed
with Judge Dyk that the clause is facially constitutional but
concluded for a variety of reasons that it is also constitutional
as applied in this case. See
id., at 1374–1376. Judge
Reyna also dissented, maintaining that trademarks are commercial
speech and that the disparagement clause survives intermediate
scrutiny because it “directly advances the government’s
substantial interest in the orderly flow of commerce.” See
id., at 1376–1382.
The Government filed a petition for certiorari,
which we granted in order to decide whether the disparagement
clause “is facially invalid under the Free Speech Clause of
the First Amendment.” Pet. for Cert. i; see
sub. nom.
Lee v.
Tam, 579 U. S. ___ (2016).
II
Before reaching the question whether the
disparagement clause violates the First Amendment, we consider
Tam’s argument that the clause does not reach marks that
disparage racial or ethnic groups. The clause prohibits the
registration of marks that disparage “persons,” and Tam
claims that the term “persons” “includes only
natural and juristic persons,” not “non-juristic
entities such as racial and ethnic groups.” Brief for
Respondent 46.
Tam never raised this argument before the PTO or
the Federal Circuit, and we declined to grant certiorari on this
question when Tam asked us to do so, see Brief Responding to
Petition for Certiorari, pp. i, 17–21. Normally, that would
be the end of the matter in this Court. See,
e.g.,
Yee v.
Escondido, 503 U. S. 519 –538
(1992);
Freytag v.
Commissioner, 501 U. S. 868
–895 (1991) (Scalia, J., concurring in part and concurring in
judgment).
But as the Government pointed out in connection
with its petition for certiorari, accepting Tam’s statutory
interpretation would resolve this case and leave the First
Amendment question for another day. See Reply Brief 9. “[W]e
have often stressed” that it is “importan[t] [to]
avoid[d] the premature adjudication of constitutional
questions,”
Clinton v.
Jones, 520 U. S.
681, 690 (1997) , and that “we ought not to pass on questions
of constitutionality . . . unless such adjudication is
unavoidable,”
Spector Motor Service, Inc. v.
McLaughlin, 323 U. S. 101, 105 (1944) . See also
Alabama State Federation of Labor v.
McAdory, 325
U. S. 450, 461 (1945) ;
Burton v.
United States,
196 U. S. 283, 295 (1905) . We thus begin by explaining why
Tam’s argument about the definition of “persons”
in the Lanham Act is meritless.
As noted, the disparagement clause prohibits the
registration of trademarks “which may disparage
. . . persons, living or dead.” 15
U. S. C. §1052(a). Tam points to a definition of
“person” in the Lanham Act, which provides that
“[i]n the construction of this chapter, unless the contrary
is plainly apparent from the context . . . [t]he term
‘person’ and any other word or term used to designate
the applicant or other entitled to a benefit or privilege or
rendered liable under the provisions of this chapter includes a
juristic person as well as a natural person.” §1127.
Because racial and ethnic groups are neither natural nor
“juristic” persons, Tam asserts, these groups fall
outside this definition. Brief for Respondent 46–48.
Tam’s argument is refuted by the plain
terms of the disparagement clause. The clause applies to marks that
disparage “persons.” A mark that disparages a
“substantial” percentage of the members of a racial or
ethnic group, Trademark Manual §1203.03(b)(i), at
1200–150, necessar-ily disparages many “persons,”
namely, members of that group. Tam’s argument would fail even
if the clause used the singular term “person,” but
Congress’ use of the plural “persons” makes the
point doubly clear.[
4]
Tam’s narrow reading of the term
“persons” also clashes with the breadth of the
disparagement clause. By its terms, the clause applies to marks
that disparage, not just “persons,” but also
“institutions” and “beliefs.” 15
U. S. C. §1052(a). It thus applies to the members of
any group whose members share particular “beliefs,”
such as political, ideological, and religious groups. It applies to
marks that denigrate “institutions,” and on Tam’s
reading, it also reaches “juristic” persons such as
corporations, unions, and other unincorporated associations. See
§1127. Thus, the clause is not limited to marks that disparage
a particular natural person. If Congress had wanted to confine the
reach of the disparagement clause in the way that Tam suggests, it
would have been easy to do so. A neighboring provision of the
Lanham Act denies registration to any trademark that
“[c]onsists of or comprises a name, portrait, or signature
identifying a
particular living individual except by his
written consent.” §1052(c) (emphasis added).
Tam contends that his interpretation of the
disparagement clause is supported by its legislative history and by
the PTO’s willingness for many years to register marks that
plainly denigrated African-Americans and Native Americans. These
arguments are unpersuasive. As always, our inquiry into the meaning
of the statute’s text ceases when “the statutory
language is unambiguous and the statutory scheme is coherent and
consistent.”
Barnhart v.
Sigmon Coal Co., 534
U. S. 438, 450 (2002) (internal quotation marks omitted).
Here, it is clear that the prohibition against registering
trademarks “which may disparage . . .
persons,” §1052(a), prohibits registration of terms that
disparage persons who share a common race or ethnicity.
Even if resort to legislative history and early
enforcement practice were appropriate, we would find Tam’s
arguments unconvincing. Tam has not brought to our attention any
evidence in the legislative history showing that Congress meant to
adopt his interpretation. And the practice of the PTO in the years
following the enactment of the disparagement clause is
unenlightening. The admitted vagueness of the disparagement
test[
5] and the huge volume of
applications have produced a haphazard record of enforcement. (Even
today, the principal register is replete with marks that many would
regard as disparaging to racial and ethnic groups.[
6]) Registration of the offensive marks that
Tam cites is likely attributable not to the acceptance of his
interpretation of the clause but to other factors—most likely
the regrettable attitudes and sensibilities of the time in
question.
III
Because the disparagement clause applies to
marks that disparage the members of a racial or ethnic group, we
must decide whether the clause violates the Free Speech Clause of
the First Amendment. And at the outset, we must consider three
arguments that would either eliminate any First Amendment
protection or result in highly permissive rational-basis review.
Specifically, the Government contends (1) that trademarks are
government speech, not private speech, (2) that trademarks are a
form of government subsidy, and (3) that the constitutionality of
the disparagement clause should be tested under a new
“government-program” doctrine. We address each of these
arguments below.
A
The First Amendment prohibits Congress and
other government entities and actors from “abridging the
freedom of speech”; the First Amendment does not say that
Congress and other government entities must abridge their own
ability to speak freely. And our cases recognize that “[t]he
Free Speech Clause . . . does not regulate government
speech.”
Pleasant Grove City v.
Summum, 555
U. S. 460, 467 (2009); see
Johanns v.
Livestock
Marketing Assn., 544 U. S. 550, 553 (2005) (“[T]he
Government’s own speech . . . is exempt from First
Amendment scrutiny”);
Board of Regents of Univ. of Wis.
System v.
Southworth, 529 U. S. 217, 235 (2000)
.
As we have said, “it is not easy to
imagine how government could function” if it were subject to
the restrictions that the First Amendment imposes on private
speech.
Summum,
supra, at 468; see
Walker v.
Texas Div., Sons of Confederate Veterans, Inc., 576
U. S. ___, ___–___ (2015) (slip op., at 5–7).
“ ‘[T]he First Amendment forbids the government to
regulate speech in ways that favor some viewpoints or ideas at the
expense of others,’ ”
Lamb’s Chapel
v.
Center Moriches Union Free School Dist., 508 U. S.
384, 394 (1993) , but imposing a requirement ofviewpoint-neutrality
on government speech would be para-lyzing. When a government entity
embarks on a courseof action, it necessarily takes a particular
viewpointand rejects others. The Free Speech Clause does not
re-quire government to maintain viewpoint neutrality when its
officers and employees speak about that venture.
Here is a simple example. During the Second
World War, the Federal Government produced and distributed millions
of posters to promote the war effort.[
7] There were posters urging enlistment, the purchase of
war bonds, and the conservation of scarce resources.[
8] These posters expressed a viewpoint, but
the First Amendment did not demand that the Government balance the
message of these posters by producing and distributing posters
encouraging Americans to refrain from engaging in these
activities.
But while the government-speech doctrine is
important—indeed, essential—it is a doctrine that is
susceptible to dangerous misuse. If private speech could be passed
off as government speech by simply affixing a government seal of
approval, government could silence or muffle the expression of
disfavored viewpoints. For this reason, we must exercise great
caution before extending our government-speech precedents.
At issue here is the content of trademarks that
are registered by the PTO, an arm of the Federal Government. The
Federal Government does not dream up these marks, and it does not
edit marks submitted for registration. Except as required by the
statute involved here, 15 U. S. C. §1052(a), an
examiner may not reject a mark based on the viewpoint that it
appears to express. Thus, unless that section is thought to apply,
an examiner does not inquire whether any viewpoint conveyed by a
mark is consistent with Government policy or whether any such
viewpoint is consistent with that expressed by other marks already
on the principal register. Instead, if the mark meets the Lanham
Act’s viewpoint-neutral requirements, registration is
mandatory.
Ibid. (requiring that “[n]o trademark
. . . shall be refused registration on the principal
register on account of its nature unless” it falls within an
enumerated statutory exception). And if an examiner finds that a
mark is eligible for placement on the principal register, that
decision is not reviewed by any higher official unless the
registration is challenged. See §§1062(a), 1071; 37 CFR
§41.31(a) (2016). Moreover, once a mark is registered, the PTO
is not authorized to remove it from the register unless a party
moves for cancellation, the registration expires, or the Federal
Trade Commission initiates proceedings based on certain grounds.
See 15 U. S. C. §§1058(a), 1059, 1064; 37 CFR
§§2.111(b), 2.160.
In light of all this, it is far-fetched to
suggest that the content of a registered mark is government speech.
If the federal registration of a trademark makes the mark
government speech, the Federal Government is babbling prodigiously
and incoherently. It is saying many unseemly things. See App. to
Brief for Pro-Football, Inc., as
Amicus Curiae. It is
expressing contradictory views.[
9] It is unashamedly endorsing a vast array of commercial
products and services. And it is providing Delphic advice to the
consuming public.
For example, if trademarks represent government
speech, what does the Government have in mind when it advises
Americans to “make.believe” (Sony),[
10] “Think different”
(Apple),[
11] “Just do
it” (Nike),[
12] or
“Have it your way” (Burger King)[
13]? Was the Government warning about a coming
disaster when it registered the mark “EndTime
Ministries”[
14]?
The PTO has made it clear that registration does
not constitute approval of a mark. See
In re Old Glory Condom
Corp., 26 USPQ 2d 1216, 1220, n. 3 (TTAB 1993)
(“[I]ssuance of a trademark registration . . . is
not a government imprimatur”). And it is unlikely that more
than a tiny fraction of the public has any idea what federal
registration of a trademark means. See
Application of National
Distillers & Chemical Corp., 49 C. C. P. A. (Pat.) 854,
863, 297 F. 2d 941, 949 (1962) (Rich, J., concurring)
(“The purchasing public knows no more about trademark
registrations than a man walking down the street in a strange city
knows about legal title to the land and buildings he passes”
(emphasis deleted)).
None of our government speech cases even
remotely supports the idea that registered trademarks are
government speech. In
Johanns, we considered advertisements
promoting the sale of beef products. A federal statute called for
the creation of a program of paid advertising
“ ‘to advance the image and desirability of beef
and beef products.’ ” 544 U. S., at 561
(quoting 7 U. S. C. § 2902(13)). Congress and
the Secretary of Agriculture provided guidelines for the content of
the ads, Department of Agriculture officials attended the meetings
at which the content of specific ads was discussed, and the
Secretary could edit or reject any proposed ad. 544 U. S., at
561. Noting that “[t]he message set out in the beef
promotions [was] from beginning to end the message established by
the Federal Government,” we held that the ads were government
speech.
Id., at 560. The Government’s involvement in
the creation of these beef ads bears no resemblance to anything
that occurs when a trademark is registered.
Our decision in
Summum is similarly far
afield. A small city park contained 15 monuments. 555 U. S.,
at 464. Eleven had been donated by private groups, and one of these
displayed the Ten Commandments.
Id., at 464–465. A
religious group claimed that the city, by accepting donated
monuments, had created a limited public forum for private speech
and was therefore obligated to place in the park a monument
expressing the group’s religious beliefs.
Holding that the monuments in the park
represented government speech, we cited many factors. Governments
have used monuments to speak to the public since ancient times;
parks have traditionally been selective in accepting and displaying
donated monuments; parks would be overrun if they were obligated to
accept all monuments offered by private groups; “[p]ublic
parks are often closely identified in the public mind with the
government unit that owns the land”; and “[t]he
monuments that are accepted . . . are meant to convey and
have the effect of conveying a government message.”
Id., at 472.
Trademarks share none of these characteristics.
Trademarks have not traditionally been used to convey a Government
message. With the exception of the enforcement of 15
U. S. C. §1052(a), the viewpoint expressed by a mark
has not played a role in the decision whether to place it on the
principal register. And there is no evidence that the public
associates the contents of trademarks with the Federal
Government.
This brings us to the case on which the
Government relies most heavily,
Walker, which likely marks
the outer bounds of the government-speech doctrine. Holding that
the messages on Texas specialty license plates are government
speech, the
Walker Court cited three factors distilled from
Summum. 576 U. S., at ___–___ (slip op., at
7–8). First, license plates have long been used by the States
to convey state messages.
Id., at ___–___ (slip op.,
at 9–10). Second, license plates “are often closely
identified in the public mind” with the State, since they are
manufactured and owned by the State, generally designed by the
State, and serve as a form of “government ID.”
Id., at ___ (slip op., at 10) (internal quotation marks
omitted). Third, Texas “maintain[ed] direct control over the
mes-sages conveyed on its specialty plates.”
Id., at
___ (slip op., at 11). As explained above, none of these factors
are present in this case.
In sum, the federal registration of trademarks
is vastly different from the beef ads in
Johanns, the
monuments in
Summum, and even the specialty license plates
in
Walker. Holding that the registration of a trademark
converts the mark into government speech would constitute a huge
and dangerous extension of the government-speech doctrine. For if
the registration of trademarks constituted government speech, other
systems of government registration could easily be characterized in
the same way.
Perhaps the most worrisome implication of the
Government’s argument concerns the system of copyright
registration. If federal registration makes a trademark government
speech and thus eliminates all First Amendment protection, would
the registration of the copyright for a book produce a similar
transformation? See 808 F. 3d, at 1346 (explaining that if
trademark registration amounts to government speech, “then
copyright registration” which “has identical
accoutrements” would “likewise amount to government
speech”).
The Government attempts to distinguish copyright
on the ground that it is “ ‘the engine of free
expression,’ ” Brief for Petitioner 47 (quoting
Eldred v.
Ashcroft, 537 U. S. 186, 219 (2003) ),
but as this case illustrates, trademarks often have an expressive
content. Companies spend huge amounts to create and publicize
trademarks that convey a message. It is true that the necessary
brevity of trademarks limits what they can say. But powerful
messages can sometimes be conveyed in just a few words.
Trademarks are private, not government,
speech.
B
We next address the Government’s
argument that this case is governed by cases in which this Court
has upheld the constitutionality of government programs that
subsidized speech expressing a particular viewpoint. These cases
implicate a notoriously tricky question of constitutional law.
“[W]e have held that the Government ‘may not deny a
benefit to a person on a basis that infringes his constitutionally
protected . . . freedom of speech even if he has no
entitlement to that benefit.’ ”
Agency for
Int’l Development v.
Alliance for Open Society
Int’l, Inc., 570 U. S. ___, ___ (2013) (slip op., at
8) (some internal quotation marks omitted). But at the same time,
government is not required to subsidize activities that it does not
wish to promote.
Ibid. Determining which of these principles
applies in a particular case “is not always
self-evident,”
id., at ___ (slip op., at 11), but no
difficult question is presented here.
Unlike the present case, the decisions on which
the Government relies all involved cash subsidies or their
equivalent. In
Rust v.
Sullivan, 500 U. S. 173
(1991) , a federal law provided funds to private parties for family
planning services. In
National Endowment for Arts v.
Finley, 524 U. S. 569 (1998) , cash grants were awarded
to artists. And federal funding for public libraries was at issue
in
United States v.
American Library Assn., Inc., 539
U. S. 194 (2003) . In other cases, we have regarded tax
benefits as comparable to cash subsidies. See
Regan v.
Taxation With Representation of Wash., 461 U. S. 540
(1983) ;
Cammarano v.
United States, 358 U. S
498 (1959).
The federal registration of a trademark is
nothing like the programs at issue in these cases. The PTO does not
pay money to parties seeking registration of a mark. Quite the
contrary is true: An applicant for registration must pay the PTO a
filing fee of $225–$600. 37 CFR §2.6(a)(1). (Tam
submitted a fee of $275 as part of his application to register THE
SLANTS. App. 18.) And to maintain federal registration, the holder
of a mark must pay a fee of $300–$500 every 10 years.
§2.6(a)(5); see also 15 U. S. C. §1059(a). The
Federal Circuit concluded that these fees have fully supported the
registration system for the past 27 years. 808 F. 3d, at
1353.
The Government responds that registration
provides valuable non-monetary benefits that “are directly
trace-able to the resources devoted by the federal government to
examining, publishing, and issuing certificates of registration for
those marks.” Brief for Petitioner 27. But just about every
government service requires the expenditure of government funds.
This is true of services that benefit everyone, like police and
fire protection, as well as services that are utilized by only
some,
e.g., the adjudication of private lawsuits and the use
of public parks and highways.
Trademark registration is not the only
government registration scheme. For example, the Federal Government
registers copyrights and patents. State governments and their
subdivisions register the title to real property and security
interests; they issue driver’s licenses, motor vehicle
registrations, and hunting, fishing, and boating licenses or
permits.
Cases like
Rust and
Finley are not
instructive in analyzing the constitutionality of restrictions on
speech imposed in connection with such services.
C
Finally, the Government urges us to sustain
the disparagement clause under a new doctrine that would apply to
“government-program” cases. For the most part, this
argument simply merges our government-speech cases and the
previously discussed subsidy cases in an attempt to construct a
broader doctrine that can be applied to the registration of
trademarks. The only new element in this construct consists of two
cases involving a public employer’s collection of union dues
from its employees. Butthose cases occupy a special area of First
Amendment case law, and they are far removed from the registration
of trademarks.
In
Davenport v.
Washington Ed.
Assn., 551 U. S. 177 –182 (2007), a Washington law
permitted a public employer automatically to deduct from the wages
of employees who chose not to join the union the portion of union
dues used for activities related to collective bargaining. But
unless these employees affirmatively consented, the law did not
allow the employer to collect the portion of union dues that would
be used in election activities.
Id., at 180–182. A
public employee union argued that this law unconstitutionally
restricted its speech based on its con-tent; that is, the law
permitted the employer to assist union speech on matters relating
to collective bargaining but made it harder for the union to
collect money to support its election activities.
Id., at
188. Upholding this law, we characterized it as imposing a
“modest limitation” on an “extraordinary
benefit,” namely, taking money from the wages of non-union
members and turning it over to the union free of charge.
Id., at 184. Refusing to confer an even greater benefit, we
held, did not upset the marketplace of ideas and did not abridge
the union’s free speech rights.
Id., at
189–190.
Ysursa v.
Pocatello Ed. Assn., 555
U. S. 353 (2009) , is similar. There, we considered an Idaho
law that allowed public employees to elect to have union dues
deducted from their wages but did not allow such a deduction for
money remitted to the union’s political action committee.
Id., at 355. We reasoned that the “the government
. . . [was] not required to assist others in funding the
expression of particular ideas.”
Id., at 358; see also
id., at 355 (“The First Amendment . . . does
not confer an affirmative right to use government payroll
mechanisms for the purpose of obtaining funds for
expression”).
Davenport and
Ysursa are akin to
our subsidy cases. Although the laws at issue in
Davenport
and
Ysursa did not provide cash subsidies to the unions,
they conferred a very valuable benefit—the right to negotiate
a collective-bargaining agreement under which non-members would be
obligated to pay an agency fee that the public employer would
collect and turn over to the union free of charge. As in the cash
subsidy cases, the laws conferred this benefit because it was
thought that this arrangement served important government
interests. See
Abood v.
Detroit Bd. of Ed., 431
U. S. 209 –226 (1977). But the challenged laws did not
go further and provide convenient collection mechanisms for money
to be used in political activities. In essence, the Washington and
Idaho lawmakers chose to confer a substantial non-cash benefit for
the purpose of furthering activities that they particularly desired
to promote but not to provide a similar benefit for the purpose of
furthering other activities. Thus,
Davenport and
Ysursa are no more relevant for present purposes than the
subsidy cases previously discussed.[
15]
Potentially more analogous are cases in which a
unit of government creates a limited public forum for private
speech. See,
e.g.,
Good News Club v.
Milford
Central School, 533 U. S. 98 –107 (2001);
Rosenberger v.
Rec-tor and Visitors of Univ. of Va.,
515 U. S. 819, 831 (1995) ;
Lamb’s Chapel, 508
U. S., at 392–393. See also
Legal Services
Corporation v.
Velazquez, 531 U. S. 533 –544
(2001). When government creates such a forum, in either a literal
or “metaphysical” sense, see
Rosenberger, 515
U. S., at 830, some content- and speaker-based restrictions
may be allowed, see
id., at 830–831. However, even in
such cases, what we have termed “viewpoint
discrimination” is forbidden.
Id., at 831.
Our cases use the term “viewpoint”
discrimination in a broad sense, see
ibid., and in that
sense, the disparagement clause discriminates on the bases of
“viewpoint.” To be sure, the clause evenhandedly
prohibits disparagement of all groups. It applies equally to marks
that damn Democrats and Republicans, capitalists and socialists,
and those arrayed on both sides of every possible issue. It denies
registration to any mark that is offensive to a substantial
percentage of the members of any group. But in the sense relevant
here, that is viewpoint discrimination: Giving offense is a
viewpoint.
We have said time and again that “the
public expression of ideas may not be prohibited merely because the
ideas are themselves offensive to some of their hearers.”
Street v.
New York, 394 U. S. 576, 592 (1969) .
See also
Texas v.
Johnson, 491 U. S. 397, 414
(1989) (“If there is a bedrock principle underlying the First
Amendment, it is that the government may not prohibit the
expression of an idea simply because society finds the idea itself
offensive or disagreeable”);
Hustler Magazine, Inc. v.
Falwell, 485 U. S. 46 –56 (1988);
Coates
v.
Cincinnati, 402 U. S. 611, 615 (1971) ;
Bachellar v.
Maryland, 397 U. S. 564, 567 (1970)
;
Tinker v.
Des Moines Independent Community School
Dist., 393 U. S. 503 –514 (1969);
Cox v.
Louisiana, 379 U. S. 536, 551 (1965) ;
Edwards
v.
South Carolina, 372 U. S. 229 –238 (1963);
Terminiello v.
Chicago, 337 U. S. 1 –5
(1949);
Cantwell v.
Connecticut, 310 U. S. 296,
311 (1940) ;
Schneider v.
State (Town of Irvington),
308 U. S. 147, 161 (1939) ;
De Jonge v.
Oregon, 299 U. S. 353, 365 (1937) .
For this reason, the disparagement clause
cannot be saved by analyzing it as a type of government program in
which some content- and speaker-based restrictions are
permitted.[
16]
IV
Having concluded that the disparagement clause
cannot be sustained under our government-speech or subsidy cases or
under the Government’s proposed
“government-program” doctrine, we must confront a
dispute between the parties on the question whether trademarks are
commercial speech and are thus subject to the relaxed scrutiny
outlined in
Central Hudson Gas & Elec. Corp. v.
Public Serv. Comm’n of N. Y., 447 U. S. 557
(1980) . The Government and
amici supporting its position
argue that all trademarks are commercial speech. They note that the
central purposes of trademarks are commercial and that federal law
regulates trademarks to promote fair and orderly interstate
commerce. Tam and his
amici, on the other hand, contend that
many, if not all, trademarks have an expressive component. In other
words, these trademarks do not simply identify the source of a
product or service but go on to say something more, either about
the product or service or some broader issue. The trademark in this
case illustrates this point. The name “The Slants” not
only identifies the band but expresses a view about social
issues.
We need not resolve this debate between the
parties because the disparagement clause cannot withstand even
Central Hudson review.[
17] Under
Central Hudson, a restriction of speech
must serve “a substantial interest,” and it must be
“narrowly drawn.”
Id., at 564–565
(internal quotation marks omitted). This means, among other things,
that “[t]he regulatory technique may extend only as far as
the interest it serves.”
Id., at 565. The
disparagement clause fails this requirement.
It is claimed that the disparagement clause
serves two interests. The first is phrased in a variety of ways in
the briefs. Echoing language in one of the opinions below, the
Government asserts an interest in preventing
“ ‘underrepresented groups’ ”
from being “ ‘bombarded with demeaning messages in
commercial advertising.’ ” Brief for Petitioner 48
(quoting 808 F. 3d, at 1364 (Dyk, J., concurring in part and
dissenting in part)). An
amicus supporting the Government
refers to “encouraging racial tolerance and protecting the
privacy and welfare of individuals.” Brief for Native
American Organizations as
Amici Curiae 21. But no matter how
the point is phrased, its unmistakable thrust is this: The
Government has an interest in preventing speech expressing ideas
that offend. And, as we have explained, that idea strikes at the
heart of the First Amendment. Speech that demeans on the
basis of race, ethnicity, gender, religion, age, disability, or any
other similar ground is hateful; but the proudest boast of our free
speech jurisprudence is that we protect the freedom to express
“the thought that we hate.”
United States v.
Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J.,
dissenting).
The second interest asserted is protecting the
orderly flow of commerce. See 808 F. 3d, at 1379–1381
(Reyna, J., dissenting); Brief for Petitioner 49; Brief for Native
American Organizations as
Amicus Curiae 18–21.
Commerce, we are told, is disrupted by trademarks that
“involv[e] disparagement of race, gender, ethnicity, national
origin, religion, sexual orientation, and similar demographic
classification.” 808 F. 3d, at 1380–1381 (opinion
of Reyna, J.). Such trademarks are analogized to discriminatory
conduct, which has been recognized to have an adverse effect on
commerce. See
ibid.; Brief for Petitioner 49;Brief for
Native American Organizations as
Amici Curiae
18–20.
A simple answer to this argument is that the
disparagement clause is not “narrowly drawn” to drive
out trademarks that support invidious discrimination. The clause
reaches any trademark that disparages
any person, group, or
institution. It applies to trademarks like the following:
“Down with racists,” “Down with sexists,”
“Down with homophobes.” It is not an
anti-discrimination clause; it is a happy-talk clause. In this way,
it goes much further than is necessary to serve the interest
asserted.
The clause is far too broad in other ways as
well. The clause protects every person living or dead as well as
every institution. Is it conceivable that commerce would be
disrupted by a trademark saying: “James Buchanan was a
disastrous president” or “Slavery is an evil
institution”?
There is also a deeper problem with the argument
that commercial speech may be cleansed of any expression likely to
cause offense. The commercial market is well stocked with
merchandise that disparages prominent figures and groups, and the
line between commercial and non-commercial speech is not always
clear, as this case illustrates. If affixing the commercial label
permits the suppression of any speech that may lead to political or
social “volatility,” free speech would be
endangered.
* * *
For these reasons, we hold that the
disparagement clause violates the Free Speech Clause of the First
Amendment. The judgment of the Federal Circuit is affirmed.
It is so ordered.
Justice Gorsuch took no part in the
consideration or decision of this case.