Supreme Court: It’s Unconstitutional To Reject Potentially Offensive Trademarks

Image courtesy of afagen

The Supreme Court has struck down a longstanding clause in federal law that prohibits the Patent and Trademark Office from registering trademarks that “disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

Oregon-based rock group The Slants, whose members are all Asian-American, acknowledge that the band’s name is sometimes used as an anti-Asian slur. In fact, the band hoped to take some of the sting out of the term by reclaiming it from the racists who would use it as an insult.

The band also hoped to trademark the name so they could protect themselves from fake merchandise and other products. But that was a problem, as the Lanham Act has long blocked the USPTO from registering “scandalous” or disparaging marks.

And on occasion, as we saw in 2014 with the Washington Redskins, the Trademark Office occasionally cancels an existing trademark registration after determining that it should not have been granted.

You can still use a canceled or unregistered mark, but you do so without the full legal protections afforded to you by having that trademark registered with the federal government.

After USPTO denied the Slants’ application for trademark, the band sued, arguing that the government’s prohibition on disparaging trademarks is a violation of the First Amendment.

In 2015, the D.C. Circuit Court of Appeals agreed, concluding that “the First Amendment protects even hurtful speech,” and that it wasn’t the USPTO’s job to be the arbiter of good taste.

A few months later, USPTO petitioned the Supreme Court to hear their appeal, claiming that denial of trademark registration is not government censorship, since the mark can still be used.

After hearing arguments from both sides in Jan. 2017, the Supreme Court justices (minus Justice Gorsuch, who was not yet on the bench when oral arguments took place) unanimously ruled today that the government is violating the First Amendment by barring the registration of disparaging trademarks.

“It offends a bedrock First Amendment principle,” writes Justice Breyer in the court’s opinion [PDF]. “Speech may not be banned on the ground that it expresses ideas that offend.”

In its petition and during oral arguments, the USPTO tried to make the point that registering a trademark is like putting an official federal seal of approval on a mark. Thus, the government has an interest in not affixing its okay onto disparaging marks.

Justice Breyer made mince meat of this argument, calling it “far-fetched.”

“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.”

Citing trademarks registered by Sony, Apple, Nike, and Burger King, Breyer asks “what does the Government have in mind when it advises Americans to ‘make.believe,’ ‘Think different,’ ‘Just do it,’ or ‘Have it your way’? Was the Government warning about a coming disaster when it registered the mark ‘EndTime Ministries’?”

The government had also argued that disparaging trademarks are disruptive to commerce, but Breyer counters that the current law is so over-generous in its phrasing that it would require USPTO to reject trademarks like “Down with racists,” “Down with sexists,” “Down with homophobes.”

“It is not an anti-discrimination clause,” explains Breyer, “it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

“There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense,” he concludes. “The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.”

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