If you have wanted to register as a trademark a name, slogan, or symbol but were afraid it would not pass muster with the U.S. Patent and Trademark Office (“USPTO”) as too edgy or because others would find it offensive, you are now free to reconsider. That is because the U.S. Supreme Court recently put the USPTO out of the viewpoint discrimination business by declaring as an unconstitutional infringement of the First Amendment the portion of the Lanham Act, 15 U.S.C. § 1052(a), which the USPTO has relied on to reject certain “offensive” trademark registrations.
The Supreme Court issued its opinion in the context of whether a band of Asian Americans were permitted to register as a trademark their band’s name “THE SLANTS”. Matal v. Tam, U.S., 2017 U.S. LEXIS 3872 (June 19, 2017). The USPTO had refused to register the trademark under Lanham Act § 2(a) which prohibits registrations “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” relying on numerous dictionaries which define “slants” or “slant-eyed” as derogatory or offensive terms. For their part, the band’s lawyer explained, as only a lawyer could, that the band chose the moniker to “reclaim” and “take ownership” of stereotypes about Asians, and that it “drew inspiration for its lyrics from childhood slurs and mocking nursery rhymes” and chose album names such as “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” Id. at *15-16.
The Supreme Court rejected as far-fetched the USPTO’s arguments that trademarks are government speech or should be evaluated under a doctrine affording less scrutiny of First Amendment speech. Memorably, the Court noted that, “if registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently,” and is “saying many unseemly things” and “expressing contradictory views.” Id. at *25-26. Noting that the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers,” the Court struck down the Lanham Act’s disparagement clause because it violates the Free Speech Clause of the First Amendment. Id. at *41.
While The Slants won their case, the biggest beneficiary of the Court’s ruling were the Washington Redskins, which will quickly seek reinstatement of its REDSKINS trademark registrations based on the ruling. The Court’s ruling may come as a surprise to casual observers, but not so much to experienced intellectual property lawyers who for years have questioned the government as arbiter of the tastefulness of federal trademark registrations.
So, for those of you who have wanted to trademark a name, tagline or symbol but were concerned it might be considered offensive, you are now free to contact a trademark attorney to assist with your filing at the USPTO.
Article brought to you by:
Francis H. Casola
Intellectual Property Group
Michael J. Hertz
Intellectual Property Group