SCOTUS Says Disparaging Trademarks Ban is Unconstitutional

In a decision that came down yesterday, the Supreme Court ruled that a rock band’s “derogatory” name should be permitted to be trademarked thus opening the floodgates to a whole bunch of permissible trademarks including one for the Washington Redskins.

Image of Slants albumThis dispute started off at the Trademark Office. Simon Shiao Tam, on behalf of the band, “The Slants”, a group of musicians of Asian descent, sought to register the trademark for “entertainment in the nature of live performances by a musical band” in Class 41. However, the The United States Patent and Trademark Office Trademark Trial and Appeal Board (”TTAB”) refused to register the trademark for the band “The Slants” because it is a racist name used to refer to people of Asian descent. The TTAB stated that the term is a “highly disparaging reference to Asian descent”. The band fully acknowledges the reference and embraces the term stating “[w]e’re very proud of being Asian – we’re not going to hide the fact.”

The TTAB claimed that since the term is disparaging, they are permitted to deny registration. The burden was on the TTAB to prove that the term was disparaging and the TTAB set forth a bunch of evidence including dictionary definitions and the band’s own Wikipedia entry. The TTAB made it a point to explain that the refusal was not because the band was Asian but that any person who tried to register the name would be denied because the term was a slur.

“The Slants” took their case to federal court.  The U.S. Court of Appeals for the Federal Circuit denied the appeal of the TTAB’s decision. The court said that there was substantial evidence that the mark was offensive to people of Asian decent and that the TTAB acted correctly. This standard was also applied to the decision to cancel the Washington Redskins trademark. In a surprising move, the court also set forth 24 pages of its views saying that the the rule that disparaging trademarks cannot be registered should be reconsidered. The court felt that some marks, even though disparaging, are protected under the First Amendment and thus the battle continued on to the Supreme Court.

While the Supreme Court Justices all agreed that the ban on disparaging trademarks was unconstitutional, their reasoning for coming to the decision differed. Some of the Justices found that the ban allowed for the USPTO to abuse their discretion in determining which marks are too offensive to protect, which could be used to discriminate against minority and dissenting views. Other Justices stressed the importance of “protecting the freedom to express the thought we hate.”
Tam’s intent in naming the band “The Slants” was to reappropriate the term as a statement of Asian pride. Interestingly, his intent was not relevant in deciding the case – which means that in the future, there is the possibility (if not the certainty) for individuals with ill intent to apply for disparaging trademarks. As noble as Tam’s intent was, the Supreme Court’s decision essentially reaffirms the notion that hate speech is protected and opens the floodgates to all sorts of potentially offensive trademark names.

This ruling is also likely to have effects on other pending controversies. The Washington Redskins have been denied trademark registration since 2014 due to their name being an offensive slur used against Native Americans, and both the Redskins and the Cleveland Indians have been under intense public pressure to change their names and mascots. While that pressure is unlikely to subside anytime soon – these teams can rest assured that their brand, however controversial or offensive, is in their hands.