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  • Jessica Eaves Mathews

"Disparaging" Trademarks like Washington Redskins Get Protection by US Supreme Court


It has long been central to our Constitution that free-speech is protected, no matter how offensive. Even speech that would otherwise be defamatory is protected as long as it is true. Some could argue that US Supreme Court has gone too far in protected certain types of speech, such as commercial speech or speech made by corporations, but there is no doubt that protecting the ability to express yourself freely without fear of legal penalty is one of the most treasured parts of our Constitutional system. With that context, the US Supreme Court just handed down a ruling that will impact trademark law for many years to come. The most well-known case in this area is the recent dispute over the Washington Redskins football team - and their fight to keep the trademark in the brand "REDSKINS." It has been challenged as being in violation of trademark law (and as discriminatory). The case dealt with by the US Supreme Court today is one involving a rock band, called The Slants. The band attempted to register the band name as a federal trademark, and the trademark office (the USPTO) in 2011 refused registration on the grounds that the trademark would violate the statute governing trademarks in the US.

The statute referred to in that case — the statute that governs the registration of trademarks in the US — is called the Lanham Act, and it contains within it a disparagement clause, which applies to marks that disparage the members of a racial or ethnic group. prohibits registration of a trademark that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. §1052(a) (see https://www.law.cornell.edu/uscode/text/15/1052) The USPTO said the trademark THE SLANTS was likely to disparage a significant number of Asian Americans. However, according to the Court’s opinion, the band’s founder Simon Tam specifically chose the name in an effort to reclaim a slur and use it as “a badge of pride.” He hoped to “drain its denigrating force as a derogatory term for Asian persons.” https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf

Tam contested the denial of registration through the administrative appeals process, to no avail. He then took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause unconstitutional under the First Amendment’s Free Speech Clause. The Appeals Court stated that the government may not “penalize private speech merely because it disapproves of the message it conveys.”

The US Supreme Court affirmed that decision, and the result will be that the USPTO cannot refuse to register trademarks that are “disparaging” or “denigrating.” They are protected under the 1st Amendment. The Opinion stated: “Contrary to the Government’s contention, trademarks are private, not government speech. Because the “Free Speech Clause . . . does not regulate government speech,” Pleasant Grove City v. Summum, 555 U. S. 460, 467, the government is not required to maintain viewpoint neutrality on its own speech. This Court exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.” The Washington Redskins case is yet to be finally determined, but this ruling regarding The Slants will certainly influence the outcome of that case, and will likely enable the football team to reclaim their trademark through federal registration. For the full story, see: https://www.washingtonpost.com/politics/courts_law/supreme-court-rejecting-trademarks-that-disparage-others-violates-the-first-amendment/2017/06/19/26a33ffa-23b3-11e7-a1b3-faff0034e2de_story.html?utm_term=.c08e7d2ec93b

#intellectualproperty #USPTO #supremecourt #USSupremeCourt #PTO #trademarks #trademarkattorney #trademarklawyer #washingtonredskins #theslants #LanhamAct #disparagementclause

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