How Broad is the Government Speech Doctrine?

Is Lee v. Tam a stretch, or perhaps a slant, for state and local governments to be interested in?

The issue in Lee v. Tam is whether Section 2(a) of the Lanham Act, which bars the Patent and Trademark Office (PTO) from registering scandalous, immoral, or disparaging marks, violates the First Amendment.

Simon Shiao Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. The PTO refused to register the band name finding it likely disparaging to persons of Asian descent. Tam sued the PTO arguing that Section 2(a) of the Lanham Act violates the First Amendment Free Speech Clause.

Unlike most First Amendment free speech cases, this case does not directly involve a state or local government. Nevertheless, state and local governments have an interest in how all First Amendment cases turn out and are reasoned. State and local governments have a particular interest in how this case is decided because the government speech doctrine is at issue.

Government speech is not protected by the First Amendment; the government has complete discretion to say or not say what it wants. In this case the PTO points out it is not preventing Mr. Tam from naming his band The Slants; it is merely refusing to register the mark.

In a lengthy opinion the Federal Circuit ruled in favor of Tam concluding Section 2(a) violates the First Amendment. Among other arguments, the court rejected the PTO’s argument that trademark registration and the “accoutrements of registration” amount to government speech. The court distinguished the Supreme Court’s recent decision in Walker v. Texas Division, Sons of Confederate Veterans (2015) where the Court concluded that specialty license plates were government speech, even though a state law allowed individuals, organizations, and nonprofit groups to request certain designs.

When the government registers a trademark, the only message it conveys is that a mark is registered. The vast array of private trademarks are not created by the government, owned or monopolized by the government, sized and formatted by the government, immediately understood as performing any government function (like unique, visible vehicle identification), aligned with the government, or (putting aside any specific government-secured trademarks) used as a platform for government speech.

Relatedly, the Federal Circuit rejected the PTO’s argument that trademark registration is a form of government subsidy that the government may refuse to extend where it disapproves of a mark’s message. “[T]rademark registration is not a program through which the government is seeking to get its message out through recipients of funding (direct or indirect).”

The Roberts Court has repeatedly ruled against federal, state, and local governments in free speech cases (most notably Citizens United v. FEC). One notable exception has been in government speech cases. In this case the Court may extend the reasoning of Walker to the context of trademarks, or not, as the Federal Circuit refused to do.