Intellectual Property Attorney

Supreme Court: Disparaging Trademarks Are Entitled to Registration Under First Amendment

We previously reported a decision of the Trademark Trial and Appeal Board (“TTAB”) affirming the refusal of registration of “THE SLANTS” as a trademark for “entertainment in the nature of live performances by a musical band.”

The Slants are a dance rock band founded in Portland, Oregon in 2006.  All five members are of Asian Pacific Islander descent.  One of the band’s members filed a trademark application for “THE SLANTS” in 2011.  The U.S. Patent and Trademark Office (“U.S. PTO”) initially rejected the application pursuant to Section 2(a) of the Lanham Act, which prevents registration of a mark that “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.”  The Trademark Examiner determined that “THE SLANTS” could not be registered because of its use as offensive slang, i.e., as a disparaging term for a person of East Asian birth or descent.  The band argued that it is seeking registration not to disparage, but rather, to wrest ownership of the term from those who might use it with the intent to disparage.

A lawsuit was brought in federal court to challenge this decision, and ultimately, a federal appeals court ruled that the anti-disparagement clause in the Lanham Act violates the First Amendment’s guarantee of free speech.  The appeals court wrote that the government “may not penalize private speech merely because it disapproves of the message it conveys.”

As reported by The Washington Post, the Supreme Court unanimously affirmed the appellate court’s decision, holding that the anti-disparagement clause is unconstitutional and that the band has the right to register a disparaging name.  The Court found that trademarks are private (not government) speech, and therefore the government has no right to silence the expression of disfavored viewpoints.  The Court wrote:  “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought that we hate.”

While the decision has been applauded by defenders of free speech, some are concerned that it will open the floodgates for the registration of offensive, even hateful, marks.  In the past, for example, the U.S. PTO has denied registration of marks such as “ABORT THE REPUBLICANS” and “DEMOCRATS SHOULDN’T BREED”.  It seems likely that marks such as these will not be prohibited going forward, at least on grounds of disparagement.

The decision is also expected to have a broad impact on how the First Amendment is applied to other trademark cases.  Perhaps most notably, the decision may impact the NFL’s Washington Redskins.  We previously posted a series of blogs (1, 2, 3, 4) regarding the team’s efforts to preserve its “WASHINGTON REDSKINS” registrations, several of which were cancelled in 2014 on grounds that “REDSKINS” is offensive to some Native Americans.  An appeal is currently pending before the 4th Circuit Court of Appeals.  The current Supreme Court decision will support the argument that the team should be free to register its name without regard to whether it may be considered disparaging by some.

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