IP Views

Can ‘Offensive,’ ‘Derogatory’ Marks be Registered?

Matal v. Tam 582 US ___ (2017) No. 15-1293
Decided June 19, 2017

Are offensive trademarks protected by Free Speech?

Simon Tam, the founder of the Asian-American rock band The Slants, tried to register the band’s name in 2011, not knowing that it would take him almost 7 years and a Supreme Court case to succeed.

The band name came from the characteristic ‘slanted eyes’ which Tam’s friends thought was the feature common among all Asians. Tam found it both funny and interesting knowing that ‘slanted eyes’ were not exclusive to Asians. Tam named the band The Slants to “reclaim” and “take ownership” of Asian stereotypes. He wanted to reclaim the slur, change the stereotype, and make it a source of pride. He felt that Asians should be proud of their cultural heritage, and not be offended by any stereotypical description.

After having encountered two other bands with the same name, he decided it was in his best legal interest to register the band name as a trademark, to establish The Slants as a brand, and give it legal protection against other groups using the name. He thought that with a trademark, his group would have a higher chance of getting a record label deal and it would open up merchandising opportunities.

On November 14, 2011, Tam filed a Trademark Application seeking to register the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band,” based on his use of the mark since 2006.

However, the examiner of the Patent and Trademark Office (PTO) refused to register THE SLANTS as a mark on the ground that it is disparaging to ‘persons of Asian descent’ under Section 2(a) of the Lanham Act. The mark referred to people of Asian descent in a disparaging way, explaining that the term slants has a “long history of being used to deride and mock a physical feature” of people of Asian descent. Despite the intention of the band to ‘reappropriate the disparaging term’, the examiner found that substantial number of people of Asian descent would find the term offensive. The examining attorney relied in part on the fact that numerous dictionaries define ‘slants’ or ‘slant-eyes’ as a derogatory or offensive term.

Section 2(a) of the Lanham Act, bars the Patent and Trademark Office (PTO) from registering scandalous, immoral, or disparaging marks which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. This provision is known as the Disparagement Provision. There have been a few marks rejected under the disparagement provision, namely: REDSKINS, The Christian Prostitute, Mormon Whiskey, KHORAN (for wine), and Marriage is for Fags.

Disparaging marks are marks which “dishonor by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” To determine if a mark is disparaging, a trademark examiner applies a ‘two-part test’ and considers:

(1) what is the likely meaning of the matter, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

(2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group

Should the examiner determine that a substantial composite, not necessarily a majority of the referenced group, find the proposed mark to be disparaging in the context of contemporary attitudes, a prima facie case of disparagement is made out and the burden shifts to the applicant to prove that the trademark is not disparaging. And the fact that the applicant may be a member of that group, or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.

Tam contested the denial of the registration before the PTO’s Trademark Trial and Appeal Board, but the Board affirmed the examiner’s refusal to register the mark.

Believing that reclaiming slurs could be a powerful act for people who face discrimination and harassment, Tam appealed to the Court of Appeals on the ground that the Board of the PTO erred in finding the mark disparaging and that Section 2(a) is unconstitutional. The Court ruled in favor of the PTO holding that there is substantial evidence to support the finding that the mark THE SLANTS likely refers to people of Asian descent; including an article written by Mr. Tam describing the ‘story behind the band’s name’ explaining:

"I was trying to think of things that people associate with Asians. Obviously, one of the first things people say is that we have slanted eyes. . . ."

"We want to take on these stereotypes that people have about us, like the slanted eyes, and own them. We're very proud of being Asian--we're not going to hide that fact. The reaction from the Asian community has been positive."

In addition, the band’s Wikipedia page stated that The Slants is “derived from an ethnic slur for Asians.” The Court also considered one of the pieces of evidence presented by the PTO where Tam was initially invited to give a keynote address at the 2009 Asian American Youth Leadership Conference in Portland, but some conference supporters and attendees felt the name of the band was offensive and racist, and out of respect for these opinions, the conference organizers decided to choose someone less controversial. Finally, the record included news articles and blog posts discussing the offensive nature of the band's name.

The Court found the mark disparaging but held that the refusal to register a mark does not bar the applicant from using the mark, and therefore does not violate the First Amendment. No conduct is proscribed and no tangible form of expression is suppressed.

Can the Patent Office refuse registration on the ground that it believes that the mark being applied for registration is allegedly disparaging of, or offensive to, a referenced group?

After almost an 7-year legal battle, the Supreme Court ruled in favor of Tam, holding that the provision prohibiting the registration of trademarks that may “disparage… or bring… into contempt or disrepute any persons, living or dead” violated the Free Speech Clause of the First Amendment. It violated the First Amendment Principle that speech may not be banned on the ground that it expresses ideas that offend.

Viewpoint discrimination is forbidden, according to the Supreme Court. Viewpoint discrimination occurs when the government is not only banning certain content or topics, but certain ideas. The test is: holding other things equal, the government allows one message while prohibiting the messages of those who can reasonably be expected to respond. It involves intent to discourage one viewpoint and advance another. The primary aim of government in applying this theory is to eradicate not just content from the marketplace, but certain viewpoints, whether positive or negative.

The disparagement clause denies registration to any mark that is offensive to a substantial percentage members of any group. Giving offense is a viewpoint. The Court held that if there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea offensive or disagreeable. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of free speech jurisprudence is that the First Amendment protects the freedom to express “the thought that we hate.”

For this reason, the Court held that the disparagement provision is unconstitutional under the Free Speech Clause.

While the Government still has an interest in preventing speech expressing ideas that offend, the disparagement clause is too sweeping to drive out trademarks that support invidious discrimination. It reaches any trademark that disparages any person, group or institution. It applies to trademarks like ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ In this way, it goes much further than is necessary to serve the interest asserted. If the purpose of the disparagement clause it to protect the orderly flow of commerce from the disruption caused by trademarks that involve disparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar demographic classification; it then cannot be conceived how commerce would be disrupted by a trademark saying, ‘James Buchanan was a disastrous President’ or ‘Slavery is an evil institution.’

Lastly, the Court saw that there is a deeper problem with the idea that the protection afforded to commercial speech does not extend to any expression likely to cause offense. 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.

While some people would find the marks offensive or derogatory, the Court ruled that the government may not prohibit the expression of an idea simply because society finds the idea offensive or disagreeable. Offensive trademarks are protected by Free Speech.

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