Disparaging, Degrading, Derogatory Trademarks: They’re Now Enforceable Says Supreme Court
You may remember that several national sports franchises are under fire for trademarks and branding that is seen to be racially disparaging. The Washington Redskins are the first team to come to mind, and it wasn’t too long ago that we all thought they had an uphill, and probably losing legal battle to keep their name registered.
That battle is likely over now that the U.S. Supreme Court weighed in on a trademark dispute for a rock band.
At issue? First Amendment rights. And the Court decided definitively and unanimously to uphold those rights, though the individual justices cited different reasons for doing so.
The Slants Challenge USPTO
Simon Tam is the lead singer for The Slants – a name the all Asian-American, Portland group was unable to register with the U.S. Patent and Trademark Office (USPTO) because the agency found the moniker to be disparaging, if not outright racist. In reaching its decision, the USPTO found that the word “slants” is a derogatory term for persons of Asian descent and that a substantial composite of persons would find the mark to be offensive.
It therefore refused registration relying on the Trademark Act provision, which allows for trademark registration refusals if a mark:
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; . . .
Tam appealed the refusal to the Trademark Trial and Appeal Board. When the Board sided with the Examining Attorney at the agency, Tam filed a lawsuit, which took him on a seven year trek through the justice system, and ultimately to the Supreme Court. “This journey has always been much bigger than our band: it’s been about the rights of all marginalized communities to determine what’s best for ourselves,” Tam said.
Why did the Supreme Court Side with The Slants?
Band members contend that though “Slants” is a racially-charged term to describe persons of Asian descent, using the term for the name of their band would dilute the denigrating aspects of the word. The Court Opinion said the band hoped to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity.
In delivering their opinion, Justices Samuel Alito, Clarence Thomas and Stephen Breyer sided with the Band and against the government, ruling:
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. . .
Procedurally, trademark examiners were required to use a two part test to determine if a mark is disparaging. They considered the likely meaning of the mark, including dictionary definitions, relationship of the matter to other elements in the mark, nature of the goods and services and manner in which the mark is used in connection with the goods and services.
If the mark refers to specific persons, institutions, beliefs or national symbols, the examiner then was required to consider whether or not the mark is disparaging to a substantial composite of persons given contemporary attitudes. If that proves to be true, the trademark applicant must prove the mark is not disparaging to continue with registration, generally an uphill battle.
In defending the claim that the USPTO’s decision did not violate the Band’s First Amendment free speech rights, the Government contended that:
- Trademarks are government speech, not private speech;
- Trademarks are a form of government subsidy; and
- The constitutionality of the disparagement clause should be tested under a new ‘government-program” doctrine.
Regarding the first argument, the Supreme Court explained that “[t]rademarks have not traditionally been used to convey a Government message” and that trademarks are private (coined by individuals to name their products and services) and not government speech. They explained:
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. . .
As to the USPTO’s second argument, the Court found that trademarks are not a form of government subsidy, as the USPTO is not paying trademark applicants to register their marks, but rather it is the applicant who must pay a filing fee as well as renewal fees to keep the trademark on the Register.
As to the USPTO’s third argument, Justice Alito stated the U.S. Supreme Court has already ruled repeatedly that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers,” and that “government may not prohibit the expression of an idea simply because society find the idea itself offensive or disagreeable”.
Therefore, the disparagement clause in the Trademark Act could not be saved by viewing it as a type of government program in which some content and speaker-based restrictions are permitted.
Disparagement Clause Found Overbroad and Unenforceable
The next matter the court considered was under what standard the band’s free speech rights should be viewed – specifically, whether trademarks should be viewed under the more relaxed scrutiny of commercial speech (whereby speech may be more easily restricted) or expressive speech which warrants a higher level of scrutiny.
The Court found that it did not need to resolve this debate because the “disparagement clause” could not withstand either level of scrutiny. For commercial speech to be curtailed, it must serve a “substantial interest” and must be “narrowly drawn”.
Here the Supreme Court found that the disparagement clause failed this requirement as the “clause reaches any trademark that disparages any person, group or institution.” In other words, the Clause goes further than necessary to serve the interest asserted. If the government could curtail any speech by labeling it a commercial speech, free speech would be endangered.
Accordingly, the Court held that the disparagement clause violated the Free Speech clause of the First Amendment resulting in the band finally being able to register their mark.
Practical Implications for Brands Like The Slants
This seminal Supreme Court decision changes trademark law in a significant way.
The Disparagement Clause was part of the original Trademark Act passed by Congress in 1870, nearly 150 years ago. It has been used by the USPTO to block what the agency deemed offensive marks for over a century.
The Supreme Court’s decision now will allow both individuals and companies to register expressive brands regardless of whether the message is offensive, hateful or inappropriate. But that is a little price to pay to protect our freedom of expression. As the Court indicated, “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’”.
Tal Grinblat is an Intellectual Property Attorney and a Certified Franchise & Distribution Law Specialist.