Last month, the US Supreme Court ruled that the US Patent & Trademark Office (USPTO) cannot reject trademark applications merely because the trademark being applied for is disparaging.
Section 2(a) of the federal Trademark Act provides that registration can be denied to any mark that “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
When Simon Tam, lead singer of the Asian-American rock band The Slants, tried to register the band name as a trademark, the USPTO rejected his application based on Section 2(a), since “slant” refers to the shape of the eyes of people of Asian origin and is, according to the USPTO, “an inherently offensive term.”
Tam has said that he chose the name The Slants precisely because he wanted to “reclaim” the term and drain its force as a derogatory term.
The Supreme Court held that, to the extent Section 2(a) allows the rejection of “matter which may disparage…,” it violates the freedom of speech clause of the US First Amendment and is, therefore, unconstitutional.
The government made numerous arguments in support of Section 2(a)’s ban on disparaging trademarks, including that all trademarks are commercial speech and, therefore, have less First Amendment protection.
Four of the justices indicated that, even if all trademarks are commercial speech, the disparagement clause is still unconstitutional, because the disparagement clause cannot withstand even the “relaxed” standard of scrutiny for commercial speech.
The disparagement clause is not, said these justices, narrowly drawn to serve the two interests the government claimed the law advances: protecting disadvantaged groups from demeaning messages and the orderly flow of commerce.
In his opinion for the Court, Justice Alito said, “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.”
Four other justices agreed that the disparagement clause constituted viewpoint discrimination, but also concluded that viewpoint based discrimination requires a higher level of scrutiny, even in the context of commercial speech.
In light of this decision, a number of other “disparaging” marks, including WASHINGTON REDSKINS, are likely to become, or continue to be, federally registered trademarks.
Immediately after the Supreme Court’s decision was made available, people began applying to register marks that constitute racial slurs.
While the Slants case applies only to “disparaging” marks, it has opened the door to applicants trying to find the boundaries of this holding. There have already been a number of applications for the registration of marks that can be considered “immoral” or “scandalous.”
Please feel free to contact us if you have any questions about choosing, registering or enforcing your trademarks.
