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Victory for The Slants and Redskins: Supreme Court Okays Offensive Trademarks

June 22, 2017
Press Release

by Carol Steinour Young and Emily Hart

This week, the United States Supreme Court settled the issue of whether an offensive name, in this case, an Asian-American rock band called “The Slants,” can properly be registered as a trademark. The Court’s conclusion? Offensive trademarks can be registered, regardless of how offensive they may be.

This issue reached the Supreme Court after a nearly eight-year legal battle between The Slants and the United States Patent and Trademark Office (USPTO). The effects of Monday’s unanimous ruling in Matal v. Tam will spread beyond the walls of the next Slants concert, as the Supreme Court held that the disparagement clause of the federal Lanham Act violates the Free Speech Clause of the First Amendment.  The fundamental constitutional principle that private speech may not be denied or banned because it expresses offensive ideas is now extended to trademark registrations.

A brief background on the dispute: In 2011, Simon Tam, the founder of the Asian-American band The Slants, applied for federal trademark registration for the band’s name.  The band acknowledged that it chose the name to “reclaim” and “drain [the] denigrating force” of the word “slant” as a derogatory term for Asian persons.  The USPTO denied the application under the disparagement clause, which (at the time) prohibited the registration of trademarks that disparage “any persons, living or dead, institutions, beliefs, or national symbols….” The USPTO concluded that there was a substantial group of people who could find the trademark offensive and refused to register the mark.  The United States Court of Appeals for the Federal Circuit held that the disparagement clause was unconstitutional, prompting the appeal by the government.

The Supreme Court first had to decide whether federal trademark registration fell under the label of “government speech,” as the government claimed.  The Court held that federal trademark registration does not fall into the category of government speech. To the contrary, the Court held that trademarks are private speech rather than government or even commercial speech. Thus, the registration, regardless of its offensive nature, is fully protected by the Free Speech Clause of the First Amendment, and the restrictions of the disparagement clause of the Lanham Act are unconstitutional.

A similar and highly publicized case concerning the 2014 cancellation of the Washington Redskins’ trademark registration was stayed pending the outcome of Matal v. Tam.  Many believe this decision will pave the way for the Redskins to successfully regain its trademark registration. With this decision, bands like The Slants and football teams like the Redskins may no longer have an issue registering or maintaining their trademarks, regardless of whether those trademarks are considered disparaging or offensive by some (or even most).

Additionally, in light of this ruling on the disparagement clause of the Lanham Act, many observers now expect a future challenge to the constitutionality of the “immoral or scandalous” clause of the Lanham Act.

This case emphasizes that trademark law should not be viewed in its own silo; constitutional law is just one area to consider in making decisions regarding the use and registration of trademarks. But a word of caution: Even though you have the right to register an offensive mark, you still need to consider whether your intended customers will view that mark as offensive or disparaging.  Public opinion, whether the mark is misleading, or whether an alternative or more arbitrary mark should be used, are all guiding points in making decisions regarding use and registration.

This post was written with assistance from Alex Snell, a Summer Associate with McNees Wallace & Nurick LLC.

© 2017 McNees Wallace & Nurick LLC
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