June 26, 2017

No More Bitching About “Disparaging” Trademarks

On June 19, 2017, the Supreme Court ruled in Matal v. Tam, No. 15-1293, that the disparagement provision of Section 2(a) of the US Trademark Act is unconstitutional because under the First Amendment to the U.S. Constitution, “Speech may not be banned on the ground that it expresses ideas that offend.”

An Oregon-based rock band called “The Slants” features Asian-American members. When one of the band members, Tam, applied to register THE SLANTS as a trademark, the US Trademark Office refused to register on grounds that “SLANTS” disparages Asian Americans. The band argued that it uses “SLANTS” expressively, to poke fun at the band members themselves and thereby subvert the offensive meaning of the word sometimes used to denigrate Asian people. The band said it did not intend to disparage anyone in the Asian community. Notwithstanding these arguments, the Trademark Trial and Appeal Board affirmed the refusal to register. The band appealed, and the Federal Circuit first affirmed the refusal, but in an unusual separate opinion, called for an en banc hearing to review the constitutionality of the disparagement provision of the Lanham Act. Sitting en banc, in December 2015, the Federal Circuit reversed its earlier decision and held the disparagement provision of Section 2(a) unconstitutional. Now, the Supreme Court confirms that the disparagement provision is unconstitutional.

Section 2(a) of the Lanham Act permits Trademark Examining Attorneys to refuse registration to any trademark that “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.” According to the Supreme Court, the government cannot prevent speech that expresses offensive ideas. Demeaning speech may be hateful, but the Constitution protects the freedom to express hateful thoughts.

I applaud Tam for pursuing review of the original refusal. Given that sensibilities as to what may be offensive or disparaging can and do change with the times, it was time to stop the Trademark Office from imposing unnecessary roadblocks on trademark owners. Through efforts to help clients register trademarks that contain impolite words like “BITCH”, I have experienced the prior difficulty of navigating the highly subjective line drawn by the Trademark Office. Tam’s appellate win will reshape trademark registration eligibility for the better.

Beyond Tam, the other winner here is The Washington Redskins, which had multiple registrations for “REDSKINS” challenged on disparagement grounds. We can now expect that the Trademark Office will reinstate those canceled registrations.

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