Enlarge / Portrait of Asian-American band The Slants (L-R: Joe X Jiang, Ken Shima, Tyler Chen, Simon ‘Young’ Tam, Joe X Jiang) in Old Town Chinatown, Portland, Oregon, in 2015.Anthony Pidgeon via Getty Images
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The Supreme Court on Thursday said it would decide, once and for all, whether federal intellectual property regulators can refuse to issue trademarks with disparaging or inappropriate names.
At the center of the issue is a section of trademark law that actually forbids the US Patent and Trademark Office (USPTO) from approving a trademark if it “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The case before the justices, which they will hear sometime in the upcoming term beginning in October, concerns the Portland-based Asian-American rock band called the Slants. Previously, decisions have come down on both sides regarding trademarking offensive names.
The most notable denial is likely the name of the NFL’s Washington franchise, “Redskins.” But lesser known denials include “Stop the Islamization of America,” “The Christian Prostitute,” “AMISHHOMO,” “Mormon Whiskey,” “Ride Hard Retard,” “Abort the Republicans,” and “Democrats Shouldn’t Breed.”
In contrast, other potentially offensive names have been trademarked.
Some of these examples include Dangerous Negro, Celebretards, Stinky Gringo, Midget-Man, and Off-White Trash.
In the Slants case the justices agreed to review, the US Court of Appeals for the Federal Circuit cited the First Amendment and sided with The Slants and its founder Simon Shiao Tam in December.
The appeals court essentially struck down the entire section of trademark law about disparaging trademarks when ruling (PDF) the Constitution even protects “hurtful speech.”
Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. Mr.
Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country…. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities.
But the First Amendment protects even hurtful speech.
The government appealed, and the high court took the case Thursday.
In its petition (PDF) to the high court, the USPTO said that it’s not a “restriction on speech” to be denied a trademark because trademarks are “federal benefits” to advance intellectual property rights.
The bar on disparaging marks “does not prevent respondent from promoting his band using any racial slur or image he wishes,” the government wrote. “It does not limit how respondent may advertise, what songs he may sing, or what messages he may convey.”
Lawyers for Tam told the justices in a court filing that he gave the band that name in 2006 because he was “following in the long tradition of ‘reappropriation,’ in which members of minority groups have reclaimed terms that were once directed at them as insults and turned them outward as badges of pride.
In recent times, the most conspicuous examples have been words such as ‘queer,’ ‘dyke,’ and so on—formerly derogatory terms that have been so successfully adopted by members of the gay and lesbian community that they have now lost most, if not all, of their pejorative connotations.”
What’s the benefit of trademark, anyway? According to the American Bar Association:
Registration on either register provides a number of benefits, including: (i) it grants the right to use the registered trademark symbol: ®, (ii) it grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees, (iii) it acts as a bar to the registration of another confusingly similar mark, and (iv) it may serve as the basis for an international trademark application.
Here is a list of papers with the Supreme Court about the case.