Trademark Use Enjoys Broad First Amendment Protection

A recent Second Circuit decision, Wandering Dago, Inc. v. Destito (2018) confirms that trademark owners enjoy broad First Amendment rights in their trademarks, and that government actors may not discriminate against them based on the message and viewpoint conveyed by the mark.

This is a further extension of the Supreme Court’s decision last year in Matal v. Tam (2017), which held that the Lanham Act’s bar on registration of disparaging marks in unconstitutional.

Wandering Dago is an incorporated business operating a food truck in and near Albany, New York. Its owners purposely chose as part of its brand what many regard as an ethnic slur, as they themselves are of Italian heritage and wish to weaken the derogatory force of the term, as well as convey a blue-collar image.

The Defendants are the New York state authority (and its director) charged with administering certain spaces in and near state buildings in Albany and elsewhere. Among other things, the defendants let certain space near state office buildings to various food vendors so that they can supply lunch to officer workers and tourists. Defendants denied Wandering Dago’s application for a permit because of the ethnic slur nature of its brand.

But the Second Circuit held that under Matal, such a denial constitutes viewpoint discrimination and is barred by the First Amendment. It also rejected the argument that the permission to provide food truck services would render Wandering Dago’s mark as “government speech,” subject to a more lenient standard.

Wandering Dago affirms that corporate messages are entitled to strong First Amendment protection. While most companies do not choose trademarks that are offensive, many companies do adopt slogans and other promotional messages that are sometimes controversial. The Wandering Dago decision affirms that such commercial messages are still protected by the First Amendment and thus the government cannot discriminate against use of such messages

In Matal v. Tam (2017), the Supreme Court held that a long-standing provision of the Lanham Act barring registration of marks that “may disparage . . . persons, living or dead, institutions, beliefs or national symbols” was unconstitutional under the First Amendment. Like Wandering Dago, Matal involved an ethnic slur – The Slants – which the defendants, an Asian-American music group, sought to register for their music band services. And like the plaintiff in Wandering Dago, they believed that use of the slur as a brand weakened its derogatory force.

Two key issues were the basis of the case. First, First Amendment law distinguishes between “viewpoint discrimination” and “content discrimination.” The former is treated more strictly, and concerns discrimination based on speech’s ideology or message; while content discrimination seeks to bar all speech on a particular subject, regardless of its viewpoint. Matal held that discrimination against speech because it is offensive is always viewpoint discrimination – the Government’s disapproval of the message is the basis of the discrimination.

Second, Matal held that the fact that Patent and Trademark Office issued a registration does not render that as “government speech” – meaning something perceived as a message conveyed by the government, as to which it is entitled to select specific messages it approves of or not.

Both issues were raised in Wandering Dago, and both were decided against the defendants who ran New York’s properties. On the first issue, since Matal clearly held that giving offense is a viewpoint, as to which the First Amendment is very strict for government discrimination, there was little doubt that the defendants had likewise engaged in viewpoint discrimination.

The second issue – government speech – was also easily decided. The fact that the State of New York provides a limited forum for speech by allowing multiple food vendors to use its space to sell lunch hardly means that the public perceives their trademarks and other commercial promotion as that of the State. Nor is the fact that the State has screened license applications for its space render that government speech, any more than the messages of other vendors (and organizations when the same space was let for various events, some political) considered by the public to be government speech.

A more difficult issue was the fact that the State organization provided publicity to its vendors as part of the lunch program (apparently run only during the tourist season). This arguably might be perceived as some kind of endorsement of Wandering Dago’s message. But this too was rejected based on Matal.

In Matal, the Supreme Court reasoned that the PTO does not create or design the marks it registers, it merely provides a service by entering them on the federal register (which has several legal advantages). Many different trademarks are registered, and it is difficult to imagine they all are viewed by the public as endorsed by the PTO.

Similarly, that New York promotes the summer lunch program of all the various vendors was viewed by the Court of Appeals as merely providing an incidental service to a wide variety of vendors. That would not be perceived as the State endorsing or adopting any particular message.

Like Matal, the Wandering Dago case confirms that trademarks that convey a message enjoy broad First Amendment protection. Most trademark owners would not, of course, chose marks that a substantial portion of the public would find offensive. But many trademark owners do adopt marks – including slogans and other promotional messages – that do convey messages. Under Matal, the PTO cannot refuse their registration based on their message. Wandering Dago confirms that the government cannot discriminate against businesses using such marks and slogans based on their message either.