Supreme Court Hears Arguments on a Case That Will Decided the Future of Offensive and Disparaging Trademarks

By: Adam Shelton

This past week the United State Supreme Court heard oral arguments regarding whether part of the Lanham Act was an unconstitutional violation of the First Amendment.[1] The question centers around the section of the act which allows a trademark to be refused if the trademark contains “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.”[2] This specific cases involves a band whose members are of Asian descent who decided to name their band “the Slants.”[3] When the band attempted to trademark the name the application was rejected by the United Stated Patent and Trademark Office because the name was “disparaging to persons of Asian ethnicity.”[4]

The issue was eventually heard by the federal circuit court and the court there was asked to decide whether the ability to refuse “disparaging” trademarks was a violation of the First Amendment.[5] The court held that the government did not have a substantial interest to justify the burdening of speech solely on the ground that it is, or that it could be seen as, offensive.[6] The court reasoned that “[t]rademarks are a form of expressive speech . . . and the government cannot penalize speech because it happens to dislike the message.”[7] It was from this decision that the Patent and Trademark Office appealed to the Supreme Court who will answer whether or not the clause violates the First Amendment with finality.

While it is unclear how the Supreme Court will rule on this case, if the Court holds the disparagement language is an unconstitutional violation of the First Amendment, it would signal a vast change in both the entertainment and sport worlds. For example, the decision in this case will have vast implications for the Washington Redskins and their battle with the Patent and Trademark Office. The argument is that if the Supreme Court affirms the decision of the federal circuit, “the Redskins will presumably get their trademark registration back.”[8] However, if the Supreme Court were to hold that disparaging clause in the Lanham Act does not violate the First Amendment then it is likely the Redskins’ argument will be over for good.[9] The importance of this case for the Washington Redskins’ legal battle is clear and can be seen by the fact that the team entered an amicus brief urging the court to uphold the lower court and declare the disparagement language violated the First Amendment.[10]

An interesting issue to note is that the band, and others, see a difference between the Redskins situation and the situation in the Tam case. The band has argued publically that the two situations are distinguishable because the band, as people of Asian descent, decided to use a term disparaging to themselves while the Redskins use a term that is offensive to Native Americas but the owner and the players are not Native American’s themselves.[11] It is unlikely that the Court will make a ruling that will allow some to use a disparaging name while not allowing others to use the same name.[12] The reason for this is that it would allow people to use a name or not use a name based off race or gender or other features which could trigger an Equal Protection issue which could open a flood of litigation. Even if the Court decided the case in a way where there was a legal ground for a distinction between the two, it would almost certainly be impossible to implement the rule on a practical basis.[13]

The importance of this case should not be, and cannot possibly be, understated. While the Washington Redskins are the largest group that will be affected if the Court upholds the ruling of the federal circuit, the ending of the provision in question will allow a countless number of bands and sports teams to name themselves offensive terms and still receive trademark protection. The ruling will also affect many sports teams and bands that have borderline offensive names since it is clear that as society evolves and changes trademarks that were given once can be revoked on the basis that they are disparaging.[14] It is important to note that the argument here is not over whether the name is question is offensive (most admit it is or can be seen as offensive), but whether or not the government should make decisions on what is offensive and what is not offensive.[15] While a decision is likely a few months away it is important to keep this case in mind as the ruling will directly affect one of the oldest teams in the country, and will effect what names bands and sports teams can trademark for years to come.

[1] David G. Savage, Asian American band the Slants takes its trademark battle to the Supreme Court: Is it free speech or a racial slur?, LA Times (Jan. 18, 2017, 2:05PM), http://www.latimes.com/politics/la-na-court-trademark-slants-20170118-story.html.

[2] 15 U.S.C. 1052(a)

[3] Sarah Jeong, Should We Be Able to Reclaim a Racist Insult — as a Registered Trademark?, N.Y. Times (Jan. 17, 2017), https://www.nytimes.com/2017/01/17/magazine/should-we-be-able-to-reclaim-a-racist-insult-as-a-registered-trademark.html.

[4] Id.

[5] In re Tam, 808 F.3d 1321, 1334 (Fed. Cir. 2015).

[6] Id. at 1354.

[7] Stephen L. Carter, ‘Slants’ Is Offensive, and Deserves a Trademark, Bloomberg View (Jan. 19, 2017, 12:01 PM), https://www.bloomberg.com/view/articles/2017-01-19/-slants-is-offensive-and-deserves-a-trademark.

[8] Sarah Jeong, Should We Be Able to Reclaim a Racist Insult — as a Registered Trademark?, N.Y. Times (Jan. 17, 2017), https://www.nytimes.com/2017/01/17/magazine/should-we-be-able-to-reclaim-a-racist-insult-as-a-registered-trademark.html.

[9] Lindsey Adler, The Supreme Court To Hear Case That Will Likely Decide Redskins Trademark Drama, Deadspin (Jan. 17, 2017, 1:35 PM), http://deadspin.com/the-supreme-court-to-hear-case-that-will-likely-decide-1791290512.

[10] Robert Barnes, Will Asian American band’s First Amendment argument resonate with Supreme Court?, Washington Post (Jan. 15, 2017), https://www.washingtonpost.com/politics/courts_law/will-asian-american-bands-first-amendment-argument-resonate-with-supreme-court/2017/01/15/cc8111b6-d8ba-11e6-b8b2-cb5164beba6b_story.html?utm_term=.c918e4d00bc6.

[11] Sarah Jeong, Should We Be Able to Reclaim a Racist Insult — as a Registered Trademark?, N.Y. Times (Jan. 17, 2017), https://www.nytimes.com/2017/01/17/magazine/should-we-be-able-to-reclaim-a-racist-insult-as-a-registered-trademark.html.

[12] Id.

[13] Id.

[14] Id.

[15] See In re Tam, 808 F.3d 1321, 1334 (Fed. Cir. 2015); Stephen L. Carter, ‘Slants’ Is Offensive, and Deserves a Trademark, Bloomberg View (Jan. 19, 2017, 12:01 PM), https://www.bloomberg.com/view/articles/2017-01-19/-slants-is-offensive-and-deserves-a-trademark.