SUPREME COURT TO DECIDE CONSTITUTIONALITY OF RESTRICTIONS ON REGISTERING DISPARAGING TRADEMARKS
In this country, rights to a trademark or service mark can be greatly enhanced by obtaining a registration for the mark from the United States Patent & Trademark Office (the “PTO”). To get such a registration, one must apply to the PTO. During the application process the PTO examines the application to see if the applied-for mark meets the formalities of serving as mark. As part of the application process the PTO will also gauge whether the mark violates the provisions of the United States trademark statute, specifically 15 U.S.C. § 1052(a). This section allows the PTO to refuse registration of marks that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Enter the band, The Slants. The Slants are made up of a constituency of musicians of Asian heritage. The leader of the group, Simon Tam, filed an application to register the band’s name as a service mark for live performances by a musical group. The PTO refused the application based upon §1052(a). That refusal was appealed to the United States Court of Appeals for the Federal Circuit. Last December, that Court found §1052(a) an unconstitutional infringement of free speech. Not surprisingly, the government appealed the finding of unconstitutionality to the Supreme Court and, also not surprisingly, the Supreme Court agreed to hear the case.
So what does this mean for you and me? Well, a lot, actually. Many businesses, not just music bands, look for a brand name that is edgy and provocative. Somewhat oxymoronically, non-conformity often has great commercial appeal. When the government starts regulating content of speech, whether it be political speech or commercial speech (such as a trademark registration), the risk of suppression of ideas and words always lurks. Whether in the form of prosecuting “hate crimes” or refusing to register offensive marks, the government has jumped head first into the speech-regulating business. And though the standards for adjudging commercial speech from non-commercial speech are different, regardless of government motive, I am not a big fan of government being in the speech-regulating business. This is especially so when it involves deciding what is “offensive.” When the government gets into that business, it has shown that it cannot do it predictably or consistently over the long term. Nor, I would contend, can it do it without being hypocritical or favoring one social element over another.
Consider, for example, that the PTO has said the words SLANT or SLANTS can be registered for use with clothes, skateboards, exhaust pipes and lighters. Remarkably, the PTO also allowed registration of the mark SLANT LIFE for use in entertainment in the nature of live musical performances – the same service classification sought by The Slants. In 2007 and to the surprise of many trademark practitioners, the PTO granted a registration for the mark DYKES ON BIKES to the San Francisco Dykes on Bikes Women’s Motorcycle Contingent – only after the application was at least twice refused on the basis that it was disparaging. This example begs the question: Why should a motorcycle organization composed of lesbians be allowed to register a mark that includes DYKE, but a musical group made up of people of Asian heritage not be allowed to register THE SLANTS?
As many have heard, in 2015 a federal judge upheld the cancellation of six long-registered REDSKINS marks on the basis they were disparaging. However, in 1998 the PTO allowed a trademark registration for the word REDSKIN for use with canned beans. Given that according to PTO records in prior iterations the word accompanied an image of a Native American, it is puzzling how this registration was allowed. Just in 2010 the PTO allowed registration of a mark using the term REDSKINS in connection with nut-based snack foods, assumedly because it referred to nuts and not people.
Even more puzzling inconsistencies exist. In 2001, the PTO granted a registration for the mark N.W.A. for prerecorded compact discs featuring music. (Readers not familiar with the group N.W.A. and its remarkable history can use the online search engine of their choice to learn what words the initials purportedly stand for.) Yet, the PTO has repeatedly rebuffed attempts by others to register variants of the word represented by the first initial. See for instance USPTO application no. 78725334. In the abstract, the reluctance to register such a word is understandable. However, in the face of the numerous registrations for marks with REDNECK (as recently in August of 2016) or WHITE TRASH, the refusals are indefensible. Add to that the fact that in 2005 the PTO actually issued a notice of allowance for the word HONKIES – after the applicant admitted its cultural connotation to white people.
I could give you more examples, but you get the point: In applying §1052(a) and deciding what is disparaging, the government seems to be sticking a wet finger in the air and deciding which way the wind is currently blowing. Query, what ruling would the PTO have made if none of the members of The Slants were of obvious Asian heritage and there was thus no context of a connection to being Asian? Would the mark still be disparaging? The registration granted to SLANT LIFE suggests it would not.
Call me a libertarian, but I would like to see the government get out of the “offensive trademark business” entirely. When it comes to determining what is offending speech, the government cannot do so in any consistent fashion or in a way that does not impinge free speech based upon content. I say if someone is willing to risk economic ruin by using what could be considered an offending mark, let them. The market has a very quick, noisy and effective way of deciding what may be offensive to a segment of society. If you doubt me, just ask the state of North Carolina how much it is enjoying the economic backlash triggered by its recent bathroom law.