The Interpretation of the Nice Class Headings in the European Union, or
the Art of One Hand Clapping
André Pohlmann
Content-Based Prohibitions on Federal Registration and
the Constitutional Right to Petition
Theodore H. Davis Jr.
Raising the Stakes: Trademark Litigation in the Wake of
B & B Hardware, Inc. v. Hargis Industries, Inc.
Alexandra H. Bistline
Commentary: Canada Weakens Trademark Structure by
Demolishing Use Foundation
Sheldon Burshtein
Commentary: Redskins, Eskimos, and Indians: The Canadian Approach to
Disparaging Trademarks
Tamara Céline Winegust, Noelle Engle-Hardy, and Susan J. Keri
Commentary: Inures to the Benefit and Trademark Licensing
Kenneth A. Adams
July–August, 2015
Vol. 105 No. 4
852
Vol. 105 TMR
CONTENT-BASED PROHIBITIONS ON FEDERAL
REGISTRATION AND THE
CONSTITUTIONAL RIGHT TO PETITION
By Theodore H. Davis Jr. ∗
I. INTRODUCTION
Section 2(a) of the federal Lanham Act bars the registration of
several categories of trademarks and service marks, including
those “consisting or comprising immoral . . . or scandalous matter,
or . . . which may disparage . . . persons, living or dead,
institutions, beliefs, or national symbols, or bring them into
contempt, or disrepute.” 1 In Pro-Football, Inc. v. Blackhorse, 2 the
United States District Court for the Eastern District of Virginia
affirmed the Trademark Trial and Appeal Board’s cancellation
under Section 2(a) of six registrations owned by the parent
company of the Washington Redskins football team, Pro-Football,
Inc. (PFI) and covering service marks incorporating the word
“redskins.” En route to the conclusion that the marks potentially
disparage Native Americans, the court rejected PFI’s argument
that the loss of its registrations violated the Free Speech Clause of
the First Amendment. Like all previous tribunals and litigants to
address the constitutionality of Section 2(a), however, the court did
not consider the potential significance of another right safeguarded
by the First Amendment, namely, the separate and independent
right to petition the government for redress of grievances. This
article addresses that omission and argues that the First
∗ Partner, Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, Associate
Member, International Trademark Association; adjunct professor, Emory University School
of Law; member, Georgia and New York bars.
1. 15 U.S.C. § 1052(a) (2012).
The ban on the registration of immoral and scandalous marks was first enacted as
Section 2(a) of the Trademark Act of 1905, Pub. L. No. 489, 33 Stat. 724 (1905), and
congressional disapproval of potentially disparaging marks became a part of federal law in
1946 as part of the federal Lanham Act. As this provenance suggests, litigation concerning
the registrability of immoral, scandalous, and potentially disparaging marks under Section
2(a) is not a recent development in trademark jurisprudence. See, e.g., Doughboy Indus. v.
Reese Chem. Co., 88 U.S.P.Q. 227 (Exam’r in Chief 1951) (DOUGH-BOY mark potentially
disparaging of World War I soldiers when used in connection with preparation for the
prevention of venereal disease); Ex parte Martha Maid Mfg. Co., 37 U.S.P.Q. 156 (Comm’r
Pats. 1938) (QUEEN MARY mark scandalous when used in connection with women’s
undergarments).
Although Section 2(a)’s prohibitions apply to the USPTO’s Principal Register and
Supplemental Register alike, all references in this article to registrations are to those on the
USPTO’s Principal Register.
2. No. 1:14-cv-01043, 2015 WL 4096277 (E.D. Va. July 8, 2015) (“Pro-Football”).
Vol. 105 TMR
853
Amendment’s Petition Clause may be a more promising
mechanism than its Free Speech counterpart for mark owners
seeking to challenge the Lanham Act’s content-based prohibitions
on registration.
II. REFUSALS TO REGISTER AS
POTENTIAL CONSTITUTIONAL VIOLATIONS
The Pro-Football court employed a two-part analysis to reject
PFI’s claim that the cancellation of its registrations abridged PFI’s
right to free speech. The court first concluded that, because Section
2(a) is relevant only to the registration process, the ineligibility of
the marks in question for registration did not affect PFI’s ability to
use them. 3 The court then determined that, properly framed, the
speech in question was the federal government’s decision to issue
or maintain the registrations, rather than PFI’s use of the marks
covered by them: As to this second part of the analysis, the court
held that “[t]he Free Speech clause does not regulate government
speech, and government speech is exempt from First Amendment
liability.” 4
Occasional dictum notwithstanding, however, modern opinions
from the Supreme Court have not gone quite that far. In
particular, even when holding in favor of governmental entities,
the Court has recognized that other provisions of the Constitution,
including the remainder of the First Amendment, may limit the
government’s exercise of free speech. This is apparent in the
Court’s observation in Pleasant Grove City v. Summum 5 that the
government speech doctrine “does not mean that there are no
restraints on government speech. For example, government speech
must comport with the Establishment Clause.” 6 The following
comments in Walker v. Texas Div., Sons of Confederate Veterans,
Inc. 7—cited repeatedly in Pro-Football—are to similar effect:
That is not to say that a government’s ability to express itself
is without restriction. Constitutional and statutory provisions
outside of the Free Speech Clause may limit government
speech. And the Free Speech Clause itself may constrain the
3. Pro-Football, 2015 WL 4096277, at *9 (“Nothing about Section 2(a) impedes the
ability of members of society to discuss a trademark that was not registered by the PTO.
Simply put, the Court holds that cancelling the registrations of the Redskins Marks under
Section 2(a) of the Lanham Act does not implicate the First Amendment as the cancellations
do not burden, restrict, or prohibit PFI’s ability to use the marks.”).
4. Id. at *17 (citation omitted).
5. 555 U.S. 460 (2009).
6. Id. at 468.
7. 135 S. Ct. 2239 (2015).
854
Vol. 105 TMR
government’s speech if, for example, the government seeks to
compel private persons to convey the government’s speech. 8
Other potential brakes on government speech include the Due
Process Clause of the Fifth Amendment and the Equal Protection
and Due Process Clauses of the Fourteenth Amendment. 9
Even if correct, the Pro-Football court’s determination that the
issuance or denial of a registration constitutes government speech
therefore does not, as the court’s opinion broadly asserts,
necessarily dispose of the potential applicability of all other
provisions of the Constitution, 10 including the Petition Clause of
the First Amendment. That clause is one of several contained in
the Amendment, which provides in its entirety that “Congress
shall make no law respecting an establishment of religion, or
prohibiting the free exercise thereof; or abridging the freedom of
speech, or of the press; or the right of the people peaceably to
assemble, and to petition the government for a redress of
grievances.” 11 As the structure of this language demonstrates, “the
First Amendment separates the Petition Clause from the Free
Speech Clause,” 12 and, therefore, the former clause is “analytically
distinct” from the latter. 13 That analytical distinction is no
accident: Instead, scholarship on the issue “convincingly
demonstrates that the textual . . . petition right[] in the First
Amendment [was] historically at least as significant as, and indeed
8. Id. at 2246 (citation omitted).
9. See, e.g., Sutliffe v. Epping Sch. Dist., 584 F.3d 314, 332 n.9 (1st Cir. 2009) (“The
Establishment Clause is [a] restraint on government speech and the Equal Protection
Clause may be as well.” (citation omitted)); R.J. Reynolds Tobacco Co. v. Bonta, 272 F. Supp.
2d 1085, 1108 (E.D. Cal. 2003) (“[I]t is possible that the Due Process Clause and the Equal
Protection Clause may provide substantive limitations on government speech programs
where the legislative classifications do not bear a rational relationship to a legitimate state
interest.”), aff’d sub nom. R.J. Reynolds Tobacco Co. v. Shewry, 384 F.3d 1126 (9th Cir.
2004), opinion amended and superseded on denial of reh’g, 423 F.3d 906 (9th Cir. 2005); see
also Summum, 555 U.S. at 482 (Stevens, J., concurring) (“For even if the Free Speech
Clause neither restricts nor protects government speech, government speakers are bound by
the Constitution’s other proscriptions, including those supplied by the Establishment and
Equal Protection Clauses.”).
10. Indeed, the Pro-Football court tacitly acknowledged this point by analyzing (and
rejecting) PFI’s arguments that Section 2(a) was void for vagueness under the Fifth
Amendment’s Due Process Clause, see 2015 WL 4096277, at *17-20, and that the
cancellation of PFI’s registrations without compensation violated the same clause, as well as
the Fifth Amendment’s Takings Clause. See id. at *20.
11. U.S. Const. amend. I.
12. Martin v. City of Del City, 179 F.3d 882, 887 (10th Cir. 1999).
13. Gable v. Lewis, 201 F.3d 769, 771 (6th Cir. 2000); see also Miller v. Weinstein, No.
CIV.A. 06-224, 2008 WL 4279817, at *19 (W.D. Pa. Sept. 12, 2008) (“Although the Petition
Clause is ‘cut from the same cloth’ as the Free Speech Clause, it is ‘an assurance of a
particular freedom of expression.’” (quoting McDonald v. Smith, 472 U.S. 479, 482 (1985)),
aff’d, 351 F. App’x 764 (3d Cir. 2009).
Vol. 105 TMR
855
antecedent to, the free speech right.” 14 Consistent with that
scholarship, the Supreme Court has cautioned lower courts against
“presum[ing] there is always an essential equivalence in the two
Clauses or that Speech Clause precedents necessarily and in every
case resolve Petition Clause claims.” 15 Indeed, to the contrary,
“[t]here may arise cases where the special concerns of the Petition
Clause would provide a sound basis for a distinct analysis [than
under the Free Speech Clause]; and if that is so, the rules and
principles that define the two rights might differ in emphasis and
formulation.” 16
Whatever the context in which it may be invoked, “[t]he right
of petition extends to all departments of the Government,
including administrative agencies.” 17 Not surprisingly, therefore,
the Court has made clear when applying the Noerr-Pennington
doctrine 18 in antitrust cases, especially in Prof’l Real Estate
Investors, Inc. v. Columbia Pictures, 19 that First Amendment
protection extends to the filing of complaints in judicial actions. 20
The Court has done the same thing in the field of labor law, in
which it has held that the right to petition will ordinarily preclude
the entry of injunctive relief against the initiation of a lawsuit on
the ground that the lawsuit is an unfair labor practice. 21
The Court’s generally solicitous attitude toward it
notwithstanding, the Petition Clause does not provide express
guidance on the scope of the rights protected by it. Nevertheless,
the First Amendment generally disfavors content-based
restrictions, 22 even where commercial speech is concerned:
14. Ashutosh Bhagwat, Associational Speech, 120 Yale L.J. 978, 981 (2011); see also id.
at 995 (“If anything, the petition and assembly provisions have at least historical, and to
some extent practical, preeminence over the speech and press provisions. But at a minimum
they should stand on an equal footing.”).
15. Borough of Duryea v. Guarnieri, 131 S. Ct. 2488, 2495 (2011).
16. Id.
17. Ginx, Inc. v. Soho Alliance, 720 F. Supp. 2d 342, 363 (S.D.N.Y. 2010).
18. See United Mine Workers v. Pennington, 381 U.S. 657 (1965); E. R.R. Presidents
Conf. v. Noerr Motor Freight, Inc., 365 U.S. 875 (1961).
19. 508 U.S. 49 (1993).
20. See id. at 56 (confirming that Congress did not intend to abrogate the right to
petition courts for the redress of copyright violations by enacting federal antitrust
legislation); see also Cal. Motor Transp. Co. v. Trucking Unlimited, 404 U.S. 508, 510 (1972)
(“The right of access to the courts is . . . one aspect of the right of petition.”).
21. See Bill Johnson’s Rests., Inc. v. NLRB, 461 U.S. 731, 741 (1983) (“[T]he right of
access to the courts is an aspect of the First Amendment right to petition the Government
for redress of grievances.”).
22. For example, the Court has observed in the context of the Free Speech Clause that
“[t]he First Amendment generally prevents government from proscribing speech, because of
disapproval of the ideas expressed. Content-based regulations are presumptively invalid.”
R.A.V. v. City of St. Paul, 505 U.S. 377, 382 (1992); see also Reed v. Town of Gilbert, 135 S.
Ct. 2218, 2228 (2015) (“A law that is content based on its face is subject to strict scrutiny
regardless of the government’s benign motive, content-neutral justification, or lack of
856
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Under a commercial speech inquiry, it is the [government’s]
burden to justify its content-based law as consistent with the
First Amendment. To sustain the targeted, content-based
burden [a statute] imposes on protected expression, the
[government] must show at least that the statute directly
advances a substantial governmental interest and that the
measure is drawn to achieve that interest. 23
In elaborating on this point, the Supreme Court has made clear
that “all citizens, regardless of the content of their ideas, have the
right to petition their government.” 24 This means that “the First
Amendment interest in protecting legitimate petitioning activity is
no less important just because of the subject matter, content, or
viewpoint of the petition.” 25 Content neutrality is therefore as
important to the right to petition as it is to other rights guaranteed
by the First Amendment. 26
‘animus toward the ideas contained’ in the regulated speech.” (quoting Cincinnati v.
Discovery Network, Inc., 507 U.S. 410, 429 (1993))); Sorrell v. IMS Health Inc., 131 S. Ct.
2653, 2667 (2011) (“In the ordinary case it is all but dispositive to conclude that a law is
content-based and, in practice, viewpoint-discriminatory.”).
Although the distinction between content-based restrictions and content-neutral
restrictions does not lend itself to easy definition, the Court has explained it in the following
terms:
The principal inquiry in determining content neutrality . . . is whether the
government has adopted a regulation of speech because of disagreement with the
message it conveys. The government’s purpose is the controlling consideration. A
regulation that serves purposes unrelated to the content of expression is deemed
neutral, even if it has an incidental effect on some speakers or messages but not
others. Government regulation of expressive activity is content neutral so long as it is
justified without reference to the content of the regulated speech.
Ward v. Rock Against Racism, 491 U.S. 781, 791 (1989) (citations omitted) (internal
quotation marks omitted); see also Turner Broad. Sys., Inc. v. FCC, 512 U.S. 622, 643 (1994)
(“As a general rule, laws that by their terms distinguish favored speech from disfavored
speech on the basis of the ideas or views expressed are content based. By contrast, laws that
confer benefits or impose burdens on speech without reference to the ideas or views
expressed are in most instances content neutral.”). For examples of content-neutral
restrictions on the exercise of free speech in the context of roadside signs, see Reed v. Town
of Gilbert, 135 S. Ct. 2218, 2233 (2015) (Alito, J., concurring).
23. Sorrell, 131 S. Ct. at 2267-68; see also Lorillard Tobacco Co. v. Reilly, 533 U.S. 525,
576 (2001) (“Even when speech falls into a category of reduced constitutional protection, the
government may not engage in content discrimination for reasons unrelated to those
characteristics of the speech that place it within the category.”); Cent. Hudson Gas & Elec.
Corp. v. Pub. Serv. Comm’n of N.Y., 447 U.S. 557, 575 (1980) (“If the First Amendment
guarantee means anything, it means that, absent clear and present danger, government has
no power to restrict expression because of the effect its message is likely to have on the
public. Our cases indicate that this guarantee applies even to commercial speech.” (citation
omitted)).
24. City of Cuyahoga Falls v. Buckeye Cmty. Hope Found., 538 U.S. 188, 196 (2003).
25. Mosdos Chofetz Chaim, Inc. v. Vill. of Wesley Hills, 701 F. Supp. 2d 568, 596
(S.D.N.Y. 2010).
26. See, e.g., Bradley v. Hall, 64 F.3d 1276, 1280 (9th Cir. 1995) (holding, in application
of the Petition Clause and without consideration of the Free Speech Clause, that use of a
government grievance process cannot be penalized merely because the substantive content
Vol. 105 TMR
857
The right to petition obviously is not absolute and can be
penalized or restricted on a content-neutral basis, 27 especially if a
litigant has a track record of bad-faith litigation practices. For
example, even under the Noerr-Pennington doctrine, an
unsuccessful plaintiff can be subject to liability in a subsequent
federal antitrust or state unfair competition lawsuit if, but only if:
(1) the plaintiff’s original claims were so objectively baseless that
no reasonable litigant could realistically expect success on the
merits; and (2) the plaintiff acted with a subjective intent to injure
the defendant. 28 It also is possible for a vexatious litigant to be
enjoined from filing new lawsuits altogether under the All Writs
Act 29 or a court’s inherent power to protect the integrity of the
judicial process; even then, however, the injunction cannot
“completely foreclose [the] litigant from any access to the courts.” 30
Restricted access to courts can result from other
circumstances, not the least of which is the unavailability to
particular plaintiffs of particular causes of action. There is no
question that Congress can decline to recognize particular causes
of action for any content-neutral reason it chooses. 31 On that
issue, however, Section 2(a)’s prohibitions on the registration of
immoral, scandalous, and potentially disparaging marks are
neither content neutral nor have a clear nexus to congressional
regulation of interstate commerce similar to that of, for example,
the likelihood-of-confusion-based ground for refusal under Section
2(d) of the Act. 32 There is also no obvious economic justification
for these prohibitions, as opposed to, for example, those barring
of a grievance includes “hostile, sexual, abusive or threatening language or gestures, verbal
or written toward another person” (quoting Or. Admin. R. 291-105-015(2)(g) (internal
quotation marks omitted)), overruled on other grounds, Shaw v. Murphy, 532 U.S. 223, 230
n.2 (2001)).
27. For example, courts will typically decline to serve “as paymasters of the wages of
crime” in cases in which a breach of contract action involves underlying criminal behavior.
Stone v. Freeman, 82 N.E.2d 571, 572 (N.Y. 1948). Likewise, libelous statements are not
immunized from liability merely because they occur in a communication to a government
official. McDonald v. Smith, 472 U.S. 479, 485 (1985).
28. Prof’l Real Estate Investors, 508 U.S. at 60.
29. Codified at 28 U.S.C. § 1651(a) (2012).
30. Riccard v. Prudential Ins. Co., 307 F.3d 1277, 1295 n.15 (11th Cir. 2002).
31. Thus, for example, Congress’s long-standing failure to enact a federal cause of
action against the actual or likely dilution of the distinctiveness of famous marks cannot be
considered an unconstitutional burden on the right to petition of those marks’ owners.
32. 15 U.S.C. § 1052(d) (2012). At least if a challenged mark is used in commerce as a
mark, rather than as the title or content of a creative work or within a political message,
there is no constitutional right to use a mark likely to cause confusion in the marketplace
(and necessarily no constitutional right to register that mark as well). See, e.g., Planned
Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q.2d 1430, 1440 (S.D.N.Y. 1997) (“Defendant’s
use of another entity’s mark is entitled to First Amendment protection when his use of that
mark is part of a communicative message, not when it is used to identify the source of a
product.”), aff’d, 152 F.3d 920 (2d Cir. 1998).
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the registration of claimed marks found to be generic 33 or
functional, 34 as to which grants of exclusive rights would have
clear and undesirable marketplace consequences. 35 And, of
course, they are not linked to a potential plaintiff’s prior
litigation-related misconduct.
Instead, they are purely content-based restrictions of the sort
traditionally disfavored under the First Amendment. That disfavor
is apparent in Sambo’s Restaurants, Inc. v. City of Ann Arbor, 36
which held that a municipality could not condition the issuance of
a business permit on the applicant’s abandonment of a service
mark found to be “a form of latent vilification”; 37 the service mark’s
status as commercial speech did not mandate a contrary result. 38
It is equally apparent in Bad Frog Brewery, Inc. v. New York State
Liquor Authority, 39 in which the Second Circuit invoked the First
Amendment to overturn a state administrative panel’s refusal to
approve the use by a brewery of a “picture on a beer bottle of a frog
behaving badly.” 40 Finally, the constitutional concerns presented
33. See 15 U.S.C. § 1064(3). No court has held that the unavailability of protection
under the Lanham Act for generic terms as marks constitutes a content-based violation of
the First Amendment: To the contrary, “First Amendment issues could be triggered if a
person is enjoined from using a generic . . . term . . . .” Deckers Outdoor Corp. v. Ozwear
Connection Pty Ltd., 113 U.S.P.Q.2d 1197, 1205 n.3 (C.D. Cal. 2014).
34. See 15 U.S.C. §§ 1052(e)(5), 1064(3). There are no readily apparent provisions of the
Constitution that might mandate the protection of functional features under federal
trademark law and, indeed, some courts have held that the Constitution prohibits that
protection. See, e.g., Wilhelm Pudenz GmbH v. Littlefuse Inc., 177 F.3d 1204, 1208 (11th
Cir. 1999) (“[W]hen the operation of the Lanham Act would upset the balance struck by the
Patent Act, the Lanham Act must yield. The functionality doctrine serves this purpose by
eliminating the possibility of a perpetual exclusive right to the utilitarian features of a
product under trademark law, which would be impossible (as well as unconstitutional)
under the Patent Act.”).
35. See generally William M. Landes & Richard A. Posner, The Economics of
Trademark Law, 78 TMR 267, 290-97 (1988).
36. 663 F.2d 686 (6th Cir. 1981).
37. Id. at 694; see also id. at 696 (Merritt, J, concurring) (“If the company has the right
to use the name under the First Amendment, then the [government] may not threaten to
refuse [an otherwise available benefit] in order to coerce a waiver any more than it may
threaten an assault or other illegal conduct.”).
38. Id. at 694-95 (“We must also reject the proposition that otherwise protected
commercial speech is stripped of that protection because of its ancillary offensiveness. . . .
“[M]uch commercial speech may be tasteless and excessive, but those characteristics alone
could not justify repression of the speech.” (citation omitted) (internal quotation marks
omitted)); accord Sambo’s of Ohio, Inc. v. City Council of Toledo, 466 F. Supp. 177, 179 (N.D.
Ohio 1979) (invalidating similar refusal to allow use of name on ground that “[i]t is clear
that the defendants’ actions in undertaking to prevent the plaintiffs from the use of their
trade name ‘Sambo’s’ is an unconstitutional deprivation of the First Amendment right of
free speech”).
39. 134 F.3d 87 (2d Cir. 1998).
40. Id. at 96. In In re Bad Frog Brewery, Inc., Serial No. 74701058, 1999 WL 149819
(T.T.A.B. Mar. 16, 1999) (nonprecedential), the Trademark Trial and Appeal Board
sustained the registrability under Section 2(a) of a label design bearing the same allegedly
miscreant amphibian:
Vol. 105 TMR
859
by content-based restrictions on particular marks are reflected in
the invalidation in Hornell Brewing Co. v. Brady41 of a federal
prohibition on the use of the CRAZY HORSE mark in connection
with alcoholic beverages. 42
Sambo’s Restaurants, Bad Frog Brewery, and Hornell Brewing
are distinguishable from the registration context to the extent that
the restrictions in those cases amounted to affirmative
prohibitions on the use of the targeted marks. And the conclusion
by the district court in Pro-Football that the denial or cancellation
of a registration in and of itself works no similar prohibition is
undeniably correct: As the Court of Customs and Patent Appeals
explained in affirming a refusal to register a mark deemed
impermissibly scandalous, “it is clear that the PTO’s refusal to
register appellant’s mark does not affect his right to use it. No
conduct is proscribed, and no tangible form of expression is
suppressed. Consequently, appellant’s First Amendment rights
would not be abridged by the refusal to register his mark.” 43 Under
this rationale, Section 2(a)’s content-based prohibitions are not
unconstitutional conditions 44 because the denial or cancellation of
a registration under them does not restrict the use of the mark in
Id. at *1.
41. 819 F. Supp. 1227 (E.D.N.Y. 1993).
42. Id. at 1233.
43. In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981); see also In re Fox, 702 F.3d 633,
635 (Fed. Cir. 2012) (“Because a refusal to register a mark has no bearing on the applicant’s
ability to use the mark, we have held that § [2(a)] does not implicate the First Amendment
rights of trademark applicants.”); In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed.
Cir. 2003) (“Previous decisions of this court and our predecessor court . . . have rejected
First Amendment challenges to refusals to register marks under section 1052(a), holding
that the refusal to register a mark does not proscribe any conduct or suppress any form of
expression because it does not affect the applicant’s right to use the mark in question.”).
44. Under the unconstitutional conditions doctrine:
[E]ven though a person has no “right” to a valuable governmental benefit and even
though the government may deny him the benefit for any number of reasons, there
are some reasons upon which the government may not rely. It may not deny a benefit
to a person on a basis that infringes his constitutionally protected interests—
especially, his interest in freedom of speech.
Perry v. Sindermann, 408 U.S. 593, 597 (1972); see also 44 Liquormart, Inc. v. Rhode Island,
517 U.S. 484, 513 (1996) (“Even though government is under no obligation to provide a
person, or the public, a particular benefit, it does not follow that conferral of the benefit may
be conditioned on the surrender of a constitutional right.”).
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question in a manner violating the mark owner’s First Amendment
right to free speech.
Such a denial or cancellation does, however, restrict the mark
owner’s access to the government in a manner bearing on the
separate and independent First Amendment right to petition. To
begin with, applications for registration themselves have the
hallmarks of constitutionally favored petitions. As the Ninth
Circuit has explained in holding that the pursuit of a federal
registration qualifies for protection under the California “AntiSLAPP” statute: 45
The filing of a trademark application is a formal
communication to the USPTO seeking official action in a
process governed by statute. . . .
....
. . . [It] is more than merely a ministerial act connected with
a business transaction. It is an attempt to establish a property
right under a comprehensive federal statutory scheme.46
Beyond their direct effect on petitions in the form of
applications, Section 2(a)’s content-based prohibitions have an
indirect, but just as real, effect on mark owners’ ability to petition
courts. The Supreme Court has observed that “[t]he benefits of
registration are substantial,” 47 and, indeed, a mark owner denied
registration can suffer numerous disadvantages in litigation to
protect its mark. Some of those disadvantages are purely
procedural in nature, 48 but others are more substantive, 49
45. Cal. Civ. Proc. Code § 425.16(e) (West 2004 & Supp. 2014).
46. Mindys Cosmetics, Inc. v. Dakar, 611 F.3d 590, 596-97 (9th Cir. 2010); cf. Marina
Lao, Reforming the Noerr-Pennington Antitrust Immunity Doctrine, 55 Rutgers L. Rev. 965,
977 (2003) (“An application to the Patent Office for a patent is obviously an effort to seek
certain government action and, hence, a petition.”); James R. Atwood, Securing and
Enforcing Patents: The Role of Noerr/Pennington, 83 J. Pat. & Trademark Off. Soc’y 651,
654 (2001) (“Almost by definition, an applicant for a patent is petitioning the government
for the right to exclude competitors from a particular field—the field of the claimed
invention. . . . This is a classic example of an individual’s right to petition for government
action (here, issuance of a patent) . . . .”).
47. B & B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293, 1309 (2015).
48. For example, Sections 7(b) and 33(a) of the Lanham Act, 15 U.S.C. §§ 1057(b),
1115(a) (2012), provide that a certificate of registration on the Principal Register constitutes
“prima facie” evidence of the validity of the registered mark; if such a registration becomes
incontestable under Section 15 of the Act, id. § 1065, that evidence becomes “conclusive,”
subject to certain exceptions identified in Section 33(b) of the Act. Id. § 1115(b). In contrast,
“[u]nregistered marks have no presumption of validity . . . . Thus, a plaintiff must prove
that an unregistered mark is valid and protectable.” MNI Mgmt., Inc. v. Wine King, LLC,
542 F. Supp. 2d 389, 404 (D.N.J. 2008) (citation omitted).
49. See, e.g., 15 U.S.C. § 1057(c) (providing that registration on Principal Register
constitutes nationwide constructive priority as of filing date of application maturing into
registration); id. § 1125(c)(2) (identifying the existence or nonexistence of a registration as
relevant to the inquiry into whether a mark is sufficiently famous to qualify for protection
against likely dilution under federal law).
Vol. 105 TMR
861
including the unavailability of particular causes of action. Thus,
for example, Section 526(a) of the Tariff Act of 1930 provides that:
[I]t shall be unlawful to import into the United States any
merchandise of foreign manufacture if such merchandise or
the label, sign, print, package, wrapper, or receptacle, bears a
trade-mark owned by a citizen of, or by a corporation or
association created or organized within, the United States,
and registered in the Patent Office . . . if a copy of the
certificate of registration of such trade-mark is filed with the
Secretary of the Treasury, . . . unless written consent of the
owner of such trade-mark is produced at the time of making
entry. 50
If the Federal Circuit is correct that Section 526 creates a private
cause of action against “sui generis types of unfair competition in
international trade,” 51 this unique remedy is unavailable to the
owner of an unregistered mark.
Of perhaps greater consequence to the average mark owner, a
plaintiff seeking to protect an unregistered mark cannot avail
itself of the federal cause of action against the trafficking in goods
and services associated with spurious imitations of that mark. A
defendant’s mark is “counterfeit” only if it is “identical [to], or
substantially indistinguishable from, a registered mark.” 52
Moreover, nonregistrants are ineligible for the cause of action
against counterfeiting created by the intersection of Section 32 of
the Lanham Act, 53 which is available only to federal registrants, 54
with Section 34 55 and Section 35. 56 Nonregistrants can rely on the
unfair competition cause of action under Section 43(a) of the Act, 57
50. 19 U.S.C. § 1526(a) (2012).
51. Vivitar Corp. v. United States, 761 F.2d 1552, 1570 (Fed. Cir. 1985).
52. 15 U.S.C. § 1127; see also id. § 1116(d)(1)(b) (“‘[C]ounterfeit mark’ means . . . a
counterfeit of a mark that is registered . . . in the . . . Patent and Trademark Office for such
goods or services sold, offered for sale, or distributed and that is in use . . . .”).
53. Id. § 1114(1).
54. See, e.g., Fin. Inv. Co. (Bermuda) Ltd. v. Geberit AG, 165 F.3d 526, 531 (7th Cir.
1998) (“Authorities uniformly agree that only the trademark’s registrant (or her assignee)
may sue under § 32(1).”); Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 779-80
(Fed. Cir. 1996) (vacating finding of liability under Section 32 in light of plaintiff’s failure to
demonstrate ownership of registration).
55. 15 U.S.C. § 1116.
56. Id. § 1117.
57. Id. § 1125(a).
As the Second Circuit has accurately described the relationship between the two
statutes, “Section 43(a) is a broad federal unfair competition provision which protects
unregistered trademarks similar to the way that section 32(1) . . . protects registered
marks.” Chambers v. Time Warner, Inc., 282 F.3d 147, 155 (2d Cir. 2002). Indeed, because
“claims under § 43(a) are broader than those made under § 32, inasmuch as they cover a
broader array of violations,” ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 941 (6th Cir.
2003), a plaintiff failing to establish that it owns protectable rights to a valid mark in the
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but liability under Section 43(a) does not trigger the heightened
remedies set forth in Section 34(d). 58 This is particularly important
where requests for ex parte seizure orders are concerned, with
respect to which Section 34(d)(4)(B)(i) provides that “[t]he court
shall not grant such an application unless . . . it clearly appears
from specific facts that . . . an order other than an ex parte seizure
order is not adequate . . . .” 59 A plaintiff’s success under Section
43(a) also will not lead to the availability of statutory damages
under Section 35(c), 60 which Congress enacted after determining
that “[e]nabling trademark owners to elect statutory damages is
both necessary and appropriate in light of the deception routinely
practiced by counterfeiters.” 61
These causes of action and remedies are grounded in
congressional recognition that there are no acceptable alternatives
to them, just as there were no alternative means for the mark
owners in Sambo’s Restaurants, Bad Frog Brewery, and Hornell
Brewing to exercise their rights under the Free Speech Clause. 62
first instance nevertheless can pursue injunctive and monetary relief under Section 43(a).
See, e.g., Forschner v Arrow Trading, 124 F.3d 402, 408-09 (2d Cir. 1997).
58. 15 U.S.C. § 1116(d).
59. Id. § 1116(d)(4)(B)(i) (emphasis added).
60. Id. § 1117(c).
61. S. Rep. 104–177, at 10 (1995) (emphasis added).
62. Some federal jurists would disadvantage the enforcement efforts of nonregistrants
even further by holding that any mark found to be ineligible for registration is necessarily
ineligible for protection under Section 43(a) or any other federal cause of action. For
example, in Renna v. County of Union, No. 2:11–3328, 2014 WL 2435775 (D.N.J. May 29,
2014), the USPTO rejected a county government’s application to register its official seal
under Section 2(b) of the Act, 15 U.S.C. § 1052(b). In a subsequent lawsuit to protect the
seal, the prior rejection of the county’s application led to the dismissal of the county’s
Section 43(a) cause of action:
The Lanham Act protects unregistered marks to the same extent as registered
marks because trademark rights emanate from use and not merely registration. To
put it another way, for a Section 43 action, registration is not a prerequisite. What is
a prerequisite, however, is that the unregistered mark be a valid and protectable one.
As to that issue, I think there is a difference between a mark that happens to be
unregistered, and one that cannot be registered as a matter of law.
Can a mark that is unregistrable under Section 2 of the Lanham Act nevertheless
support a cause of action under Section 43? I am persuaded that Section 2 declares
certain marks to be unregistrable because they are inappropriate subjects for
trademark protection. It follows that such unregistrable marks, not actionable as
registered marks under Section 32, are not actionable under Section 43, either.
Renna, 2014 WL 2435775, at *8 (citation omitted) (internal quotation marks omitted).
Under this view of Section 2, “[t]he Section 2 restrictions . . . distinguish fit from unfit
subjects of trademark protection. To put it another way, a mark is not denied registration
under Section 2 because of some quirk of the registration process; it is deemed unregistrable
because it is not a suitable, protectable mark.” Id.
Judge Moore of the United States Court of Appeals for the Federal Circuit has taken
the same approach in commenting on the potential disparagement prong of Section 2(a):
Not only is a disparaging trademark denied federal registration, but it cannot be
protected by its owner by virtue of a § 43(a) claim. . . . [I]t is the use of a trademark in
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An ex parte seizure order might be of particular importance to a
professional sports team seeking to challenge the trafficking of
goods bearing counterfeit imitations of its marks, just as the
availability of the Section 526 cause of action is of greatest
relevance to mark owners seeking to avail themselves of importexclusion orders. Nevertheless, regardless of the industries in
which they operate, all mark owners have an interest in
vindicating their rights through petitions to courts for relief. And,
if a content-based prohibition against registration deprives them of
access to that relief, causation exists between the prohibition and
an impairment of the right to petition in a way that causation may
not exist between the same prohibition and an impairment of the
distinguishable right to free speech.
commerce, not its registration, which gives rise to a protectable right. Equally clear,
however, is that § 43(a) protection is only available for unregistered trademarks that
could have qualified for federal registration. Thus, no federal cause of action is
available to protect a trademark deemed disparaging, regardless of its use in
commerce.
In re Tam, 785 F.3d 567, 576 (Fed. Cir.) (additional views of Moore, J.), reh’g en banc
granted, opinion vacated, 600 F. App’x 775 (Fed. Cir. 2015).
This broad view of the significance of the registration process is open to question. For
example, the suggestion that “no federal cause of action is available” to protect a mark
deemed unregistrable under Section 2, id., cannot be reconciled with the federal dilution
statute, Section 43(c) of the Lanham Act, which expressly identifies whether or not a mark
is registered as one of four nonexclusive factors for consideration in the threshold inquiry
into mark fame, 15 U.S.C. § 1125(c)(2); the existence or nonexistence of a registration
therefore clearly does not serve a gatekeeping function in actions brought under that
statute. Moreover, even where Section 43(a) is concerned, courts have routinely recognized
the eligibility for protection under that statute of designations that do not qualify for federal
registration. See, e.g., Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 (5th Cir. 1999)
(“The Trademark Trial and Appeal Board has consistently interpreted [prior authority of
the C.C.P.A.] as prohibiting the registration of single book titles as trademarks. The
descriptive nature of a literary title does not mean, however, that such a title cannot receive
protection under § 43(a).”); Walt-W. Enters. v. Gannett Co., 695 F.2d 1050, 1054 n.6 (7th
Cir. 1982) (“Although trade names . . . are not registrable under the Lanham Act, an action
for trade name infringement is nonetheless proper under [Section 43(a)].” (citation
omitted)); Bros. of the Wheel M.C. Exec. Council, Inc. v. Mollohan, 909 F. Supp. 2d 506, 542
(S.D. W. Va. 2012) (noting availability of protection under Section 43(a) for flag design even
if design unregistrable under Section 2(b), 15 U.S.C. § 1052(b)). Finally, the theory that the
cancellation of a registration covering a particular mark will in and of itself disqualify the
mark’s owner from availing itself of Section 43(a)’s cause of action has met with nearuniversal rejection. See, e.g., San Juan Prods., Inc. v. San Juan Pools of Kan., Inc., 849 F.2d
468, 474 (10th Cir. 1988) (“Unlike the registration of a patent, a trademark registration of
itself does not create the underlying right to exclude. Nor is a trademark created by
registration. While federal registration triggers certain substantive and procedural rights,
the absence of federal registration does not unleash the mark to public use. The Lanham
Act protects unregistered marks as does the common law.” (citation omitted)); see also
Specialized Seating, Inc. v. Greenwich Indus., 616 F.3d 722, 728 (7th Cir. 2010) (“All a
finding of fraud does is knock out the mark’s ‘incontestable’ status, and its registration . . . .
It does not affect the mark’s validity, because a trademark need not be registered to be
enforceable.”); Orient Exp. Trading Co. v. Federated Dep’t Stores, Inc., 842 F.2d 650, 654
(2d Cir. 1988) (“Even if appellants’ registered marks [sic] are cancelled, however, the use of
the [disputed] name . . . could still be protected from unfair competition under section 43(a)
of the Lanham Act.”).
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This analysis does not depend on the proposition that the
Petition Clause provides greater protection than does the Free
Speech Clause. 63 Even if such a hierarchical relationship does not
exist, a determination of constitutional invalidity under one of the
First Amendment’s various clauses is hardly a prerequisite for a
determination of unconstitutionality under another. For example,
it is beyond material dispute that express congressional
recognition of a national religion would violate the Establishment
Clause, whether or not it also violated the Free Exercise Clause.
By the same token, a federal prohibition on political conventions
would violate the Assembly Clause even in the absence of a
showing that that prohibition was fatally inconsistent with the
Free Press Clause as well. These are necessary results if the
multiple-clause structure of the First Amendment is to receive the
respect it deserves. 64
An equally necessary result of that structure is that the
government can violate the Petition Clause even if it has not
affirmatively suppressed the contents of a disputed petition in a
manner violating the Free Speech Clause. This proposition is
apparent in the outcome of Autor v. Pritzker, 65 in which the D.C.
Circuit addressed a presidential order directing executive agency
heads to bar federally registered lobbyists from serving on
industry trade advisory committees (ITACs). Reversing the
dismissal of a challenge to the order for failure to state a claim, the
court rejected the government’s argument that the lobbyists’ right
to petition was not infringed because they had alternative
mechanisms available to them for influencing government action.
As the court explained, “[the lobbyists’] ability to participate in
trade policy in a variety of other ways is no answer to their
argument that banning them from ITAC membership deprives
them of an especially effective way to affect government policy.” 66
The lobbyists’ possible rights under the Free Speech Clause went
unmentioned: Instead, reversal was appropriate because “[the
lobbyists] have pled a viable First Amendment unconstitutional
conditions claim. That is, they allege that the government has
63. On this issue, compare McDonald v. Smith, 472 U.S. 479, 485 (1985) (holding, in
libel action arising from statements made in communications to the President and other
administration members, that “[t]he[] First Amendment rights are inseparable, and there is
no sound basis for granting greater constitutional protection to statements made in a
petition . . . than other First Amendment expressions” (citation omitted)) with Brown v.
Glines, 444 U.S. 348, 363 n.4 (1980) (Brennan, J., dissenting) (“It may be that the Petition
Clause, in some contexts, enhances the protections of the [Free] Speech Clause.”).
64. Of course, it is entirely possible for particular government actions to violate
multiple clauses of the First Amendment. See, e.g., Murdock v. Pennsylvania, 319 U.S. 105,
113 (1943) (identifying freedom of press, freedom of speech, and freedom of religion as
grounds for invalidation of state tax on distribution of religious materials).
65. 740 F.3d 176 (D.C. Cir. 2014).
66. Id. at 183.
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conditioned their eligibility for the valuable benefit of ITAC
membership on their willingness to limit their First Amendment
right to petition government.” 67
That the Petition Clause can be violated in the absence of a
concomitant violation of the Free Speech Clause does not, however,
mandate an application of differing standards under each. To the
contrary, there is a congruence between the tests for constitutional
infirmity under both clauses, namely, that content-based
restrictions (1) are presumptively suspect under both clauses and
(2) can be invalidated if (a) they burden the exercise of a right
recognized by the clause at issue and (b) the government cannot
demonstrate that they “directly advance[] a substantial
governmental interest and that [they are] drawn to achieve that
interest.” 68 As represented by Pro-Football and Federal Circuit
authority, the prevailing judicial consensus is that Section 2(a)’s
content-based prohibitions work no such burden on the rights
protected by the Free Speech Clause. In contrast, the burden
imposed by those same content-based prohibitions on the rights of
mark owners under the Petition Clause is apparent in their direct
effect on the application process itself and, additionally, in the
unavailability to nonregistrants of at least some statutory causes
of action; the significance of the procedural disadvantages suffered
by those nonregistrants in pursuing the causes of action that are
available to them therefore need not be addressed.
III. CONCLUSION
Although comprising less than fifty words, the First
Amendment is a complex bundle of rights, of which the right to
67. Id.
Autor is potentially relevant to the constitutionality of Section 2(a)’s content-based
prohibitions for an additional reason. Relying on the USPTO’s adoption of a user-fee funded
system, see Pub. L. 101-508, § 10101, 104 Stat. 1388, 1388-91 (1990), this article’s author
previously has argued that the content-based prohibitions of Section 2(a) are
unconstitutional conditions that fall outside the scope of Supreme Court jurisprudence
sustaining congressional funding decisions (although, to be sure, user fees are forwarded to
the Department of the Treasury before they are appropriated back to the USPTO by
Congress). See Theodore H. Davis Jr., Registration of Scandalous, Immoral, and
Disparaging Matter Under Section 2(a) of the Lanham Act: Can One Man’s Vulgarity be
Another’s Registered Trademark?, 83 TMR 801, 832-33 (1993). Without addressing how the
agency’s operations are bankrolled, the district court in Pro-Football reached the contrary
conclusion, holding that “the federal trademark registration program is constitutional
because the federal government may determine the contents and limits of programs that it
creates and manages.” 2015 WL 4096277, at *11. The court supported its holding on this
point by citing to Rust v. Sullivan, 500 U.S. 173 (1991), which sustained the
constitutionality of a prohibition on recipients of certain grants from engaging in abortionrelated activities. As the Autor court correctly noted of opinions such as Rust, however,
“[t]he Supreme Court has never extended the subsidy doctrine to situations not involving
financial benefits . . . .” 740 F.3d at 183.
68. Sorrell v. IMS Health Inc., 131 S. Ct. 2653, 2267-68 (2011).
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free speech is only one. That Section 2(a)’s purely content-based
prohibitions on the registration of immoral, scandalous, and
potentially disparaging matter do not affirmatively bar the use of
marks falling within their scope therefore does not dispose of the
question of whether the prohibitions are inconsistent with the
Amendment as a whole. Nor does recognition of an inconsistency
depend on the proposition that eligibility for registration is a
prerequisite for protection under federal law generally. Rather, in
light of the disadvantages visited upon mark owners denied
registration under Section 2(a)’s content-based prohibitions, the
Amendment’s Petition Clause merits attention in litigation
challenging the prohibitions’ constitutionality, even if that
attention has not been forthcoming to date.