Court to weigh if trademarks considered offensive can be blocked

Supreme Court to Weigh if Feds Can Block Trademarks Considered Offensive

They call themselves "The Slants".

They're members of a Portland rock band organized by Simon Tam, an Asian-American musician and political activist. The name, he explains, is intended "to take on stereotypes that people have about us, like the slanted eyes, and own them."

But his effort to turn a racial slur into a badge of defiance ran into trouble at the US Patent and Trademark Office. Officials there said in 2011 that the name could not be granted government protection because a federal law forbids issuing trademarks that may disparage people "or bring them into contempt or disrepute."

On Wednesday, the U.S. Supreme Court considers whether that law is an unconstitutional restriction of free speech.

The Washington Redskins of the NFL are watching the case closely. A victory for The Slants would undoubtedly require the government to restore the trademark protection it took away from the team in 2014.

After forming the band in 2006, Tam sought to register The Slants as a federally protected trademark. "It could be our slant on life, of what it's like to be Asian-Americans, our perspective. And then at the same time we could kind of address this false stereotype."

But a government examiner rejected it, explaining that it would disparage persons of Asian descent. So Tam sued and won.

The Court of Appeals for the Federal Circuit, which hears trademark cases, ruled that making decisions about which trademarks might be disparaging amounts to improper viewpoint discrimination by the government, "in order to stifle the use of certain disfavored messages."

Therefore, the court ruled, the disparagement part of the trademark law — a provision in effect since 1946 — is unconstitutional. The Obama Justice Department asked the U.S. Supreme Court to hear the case, hoping to salvage the federal law.

"The First Amendment does not require the federal government to assist those who wish to sell products or services using racial slurs, religious insults, or other disparaging marks," argues Ian Gershengorn, the acting solicitor general.

Tam is free to call his band whatever he wants, Gershengorn says. The disputed law simply prevents the musicians from summoning the resources of the federal government to help them enforce their trademark.

By the same logic, the Justice Department says, the government can decline to provide funding for certain types of art or can exclude offensive slogans from state-issued license plates.

Striking down the disparagement provision, the government says, would force it to register trademarks "containing crude references to women based on parts of their anatomy, the most repellent racial slurs and white supremacist slogans, and demeaning illustrations of the prophet Mohammed and other religious figures."

But the libertarian Cato Institute, in a brief supporting "The Slants", says trying to stamp out disparaging speech is misguided, because no public official can be trusted to neutrally identify terms that cross the line.

"Disparaging speech has been central to political debate, cultural discourse, and personal identity for as long as this country has existed," the group says, noting that the donkey became a symbol for the Democratic Party after a political opponent called Andrew Jackson "a jackass." So he put the animal on his campaign posters.

Tam's lawyers also argue that the law is so vague that the government's application is inconsistent. Registration was denied to "Have You Heard Satan is a Republican", on the ground that it was disparaging, but "The Devil is a Democrat" was allowed. Similarly, the trademark office has allowed "Fagdog" on some occasions but has denied it other times.

"The Patent and Trademark Office might as well be tossing a coin," says John Connell, Tam's lead lawyer.

A trademark is not simply permission to claim bragging rights to the name, Tam explains. "A lot of record labels will actually not sign you or work with you unless you have a registered trademark."

Band members will be in the courtroom to watch Wednesday's argument. To mark the occasion, they've recorded a new album: "The Band Who Must Not Be Named."

© Members of the Portland, Oregon-based Asian-American rock band The Slants (L-R) Tyler Chen, Ken Shim... Image: Members of the Portland, Oregon-based Asian-American rock band The Slants pose


Offensive Trademarks Are Free Speech

In 2004 the U.S. Patent and Trademark Office agreed to register Heeb as the name of a magazine covering Jewish culture. Four years later, the PTO refused to register Heeb as the name of a clothing line conceived by the magazine's publishers, because the term is "a highly disparaging reference to the Jewish people."

Such puzzling inconsistency is par for the course at the PTO, which since 1946 has been charged with blocking registration of trademarks that "may disparage...persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." A case the Supreme Court will hear today could put an end to that vain, vague, and highly subjective enterprise, which sacrifices freedom of speech on the altar of political correctness.

The case involves an Asian-American dance rock band called The Slants, a name that self-consciously repurposes a racial slur. In 2011 the band's founder, Simon Tam, tried to register the name but was rejected by a PTO examiner who deemed it disparaging to "persons of Asian descent."

An administrative appeals board affirmed that decision, even while conceding that the band's name was "an attempt not to disparage, but rather to wrest 'ownership' of the term from those who might use it with the intent to disparage." The board said "the fact that applicant has good intentions underlying the use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable."

In 2015 a federal appeals court agreed that Tam "may offend members of his community with his use of the mark" but noted that "the First Amendment protects even hurtful speech." The court ruled that the ban on registration of disparaging trademarks amounts to viewpoint-based speech regulation, which the Supreme Court has said is constitutional only if it is narrowly tailored to serve a compelling government interest. The interest in this case—protecting the feelings of people who might be offended by an outrĂ© trademark—does not even qualify as legitimate, let alone compelling.

The PTO maintains that it's not really regulating speech, since Tam is free to call his band whatever he wants. But denying him the trademark-protecting benefits of registration clearly imposes a burden on his speech, analogous to denying copyright registration for a book that bothers a bureaucrat.

The PTO also argues that trademark registration should be viewed as government speech, similar to messages on license plates. But as the Cato Institute notes in a friend-of-the-court brief (which was joined by the Reason Foundation, publisher of this website), that contention is pretty implausible when the list of registered trademarks "includes such hallowed brands as 'Capitalism Sucks Donkey Balls' and 'Take Yo Panties Off.'"

Those examples also appear in a brief filed by the corporate owner of the Washington Redskins, which is engaged in its own legal battle over an allegedly disparaging trademark. The brief lists hundreds of arguably disparaging registered trademarks, including band names such as N.W.A., White Trash Cowboys, Whores From Hell, Cholos on Acid, The Pricks, Barenaked Ladies, and The Roast Beef Curtains.

Since disparagement is in the eye of the beholder, registration decisions vary with the moods and sensibilities of the PTO's examiners. It is therefore not surprising that "the PTO's record of trademark registrations and denials often appears arbitrary and is rife with inconsistency," as the appeals court found.

Among other examples, the court noted that "the PTO denied the mark HAVE YOU HEARD SATAN IS A REPUBLICAN because it disparaged the Republican Party…but did not find the mark THE DEVIL IS A DEMOCRAT disparaging." The PTO "registered the mark FAGDOG three times and refused it twice."

Uncertainty about the PTO's decisions has a chilling effect on applicants' choices, encouraging them to steer wide of trademarks that might be controversial. In fact, avoiding controversy is the whole idea of enforcing the rule against disparagement, and that goal is plainly inconsistent with freedom of speech.

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