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Supreme Court Delves Into Question Of Whether Or Not You Can Trademark 'Disparaging' Terms

Things not looking good for the USPTO.

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SCOTUS Supreme Court winterA little over a year ago, we wrote about an appeals court ruling saying that the US Patent and Trademark Office (PTO) could not reject a trademark based on the fact that it was “disparaging” towards an individual or group. The case focused around whether or not a Portland band named “The Slants” could trademark its name. The band, which is fronted by an Asian American named Simon Tam, had its trademark rejected by the PTO on the claim that it was disparaging to Asians.

As I noted at the time, I had struggled with my own opinion on this question as well — initially arguing that this shouldn’t be a First Amendment issue, because refusing to grant a trademark registration in no way interfered with anyone’s freedom of expression. Instead, it did the opposite, and made it clear that anyone could make use of the content without restriction or fear of infringing on someone’s registered mark (though, a common law trademark may still be an issue). Over time, and after lots of discussions with lots of people on all sides of this issue, I eventually came down on the other side. The key issue was not whether or not speech was blocked, but rather that there’s a law that determines something based on the content of speech, and it’s thatpoint that makes it a First Amendment issue.

The PTO appealed the appeals court ruling, and it’s been pretty fascinating to follow the case over the past year. For some fun, I encourage folks to read some of the amicus briefs filed in the case. Public Citizen’s brief (in support of neither party) most closely matches my own views. The brief from the think tank Cato is also a fun read in that it tries to make its point about the vagueness of what’s disparaging and what’s not in somewhat amusing ways:

For example, one of this brief’s authors is a cracker (as distinct from a hillbilly) who grew up near Atlanta, but he wrote this sentence, so we can get away with saying that. Another contributor—unnamed because not a member of the bar—is an Italian-American honky who has always wanted to play in a band called the Dagos, which of course would close every set with “That’s Amore” from “Lady and the Tramp.” But, with only his great grandparents having come from Italy, is he dago enough to “take back” the term? And amici’s lead counsel is a Russian-Jewish emigre who’s now a dual U.S.-Canadian citizen. Can he make borscht-belt jokes about Canuck frostbacks even though the first time he went to shul was while clerking in Jackson, Mississippi?

It gets complicated. And that’s the point. The disparagement clause places an unconstitutional condition on those who consider the use of an edgy or taboo phrase to be part of their brand.

Separately, I also highly recommend reading Sarah Jeong’s impressive and detailed deep dive into the case for the NY Times Magazine. It has the following analogy which is just incredible:

Federal registration is the T.S.A. PreCheck of intellectual-property law: Not everyone has to get it, but if you do a lot of business, you probably should. The problem is that in the Slants’ case, the trademark office has come to look a bit like the popular image of the T.S.A.: a bureaucracy of bored enforcers just trying to churn through the queue and get through the day. Except that every now and then, something complicated comes down the screening belt, or someone gets a little overzealous about the job, and everyone winds up looking bad.

And this bit of background concerning the years-long back and forth between the Slants’ lawyers and the PTO:

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Shortly after receiving their initial refusal from the patent office, the Slants sent a response explaining that “Applicant’s Mark, as used … is a positive term of self-reference that promotes cultural pride and recognition.” The response included several exhibits, including declarations from longtime Asian-American community organizers. The office replied with yet another refusal, just as lengthy and full of screenshots as the last one. This strange back-and-forth went on for over a year. In June 2011, the Slants submitted a 250-page request for reconsideration that included the results of a survey designed by two university professors, who concluded that few members of the Asian and Pacific Islander community viewed “the Slants” as disparaging. The office responded with a 157-page denial that included more dictionary definitions, arguments in internet forums and, strangest of all, the comments thread under a blog post about the trademark dispute itself. In the comments, the blogger opines that the Slants’ name “would be like a black performer calling himself the N-word.” The writer continued, “It would be ridiculous and people would see that performer as ridiculous.” Then, Tam himself barges into the thread the office cites, with a long, detailed response that begins by pointing out that the “N” in the name of the rap group N.W.A. stands for the N-word.

There’s much more in there, so go read it.

And that brings us to Wednesday, when the case was finally heard before the Supreme Court. You can read the full transcript of the oral arguments with the standard caveat that very rarely can you actually determine how the Supreme Court will rule based on oral arguments. I won’t dive into the whole thing, but it is worthwhile to read through it. The lawyer representing the PTO, Deputy Solicitor General Malcolm Stewart, gets tripped up pretty early on. The Justices are trying to understand why it’s okay for the PTO to reject “disparaging” trademarks, and the best Stewart can argue is that such marks are a “distraction” from the original intent of trademark, to be an indicator of origin of a good or service. Justice Breyer points out how little sense that makes:

The only question I have for you is what purpose related to trademarks objective does this serve? And I want to be sure I have your answer. Your answer so far was, it prevents the –or it helps to prevent the user of the product from being distracted from the basic message, which is, I made this product.

I take it that’s your answer. And if that’s your answer, I will –my follow-up question to that would be, I can think probably, and with my law clerks, perhaps 50,000 examples of instances where the space the trademark provides is used for very distracting messages, probably as much or more so than the one at issue, or disparagement. And what business does Congress have picking out this one, but letting all the other distractions exist?

Justice Alito also makes a fairly compelling argument against the rule that bars registered trademarks on disparaging terms by noting that pretty much everyone would agree that it would be unconstitutional for the government to deny government programs, like police or fire services, to groups it says have made “disparaging” remarks. The point being: determining who is eligible for certain government benefits based on the content of their speech is… problematic.

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The arguments for the Slants were handled by John Connell, and here, Justice Sotomayor raised the initial issue I had with this line of cases, that nothing here stops the Slants from using the name:

No one is stopping your client from calling itself The Slants. No one is stopping them from advertising themselves that way, or signing contracts that way, or engaging in any activity, except that stopping someone else from using the same trademark. But even that they could do. Because you don’t need a registered trademark to sue under the Lanham Act’s entitlement for the confusion of the public in the use of any kind of registered or unregistered mark. If another band called themselves Slants, they would be subject to deceptive advertisements because they wouldn’t be this Slants.

Connell does a pretty good job answering that:

In this case, the government has used the disparagement clause to selectively deny those legal benefits to a mark holder expressing negative views that the government favors, as opposed to mark holders who received those benefits because they express neutral or positive views that the government does favor.

In other words: isn’t it a problem when the government blesses speech it likes, but refuses to bless speech it dislikes? There’s a lot more in the arguments that are worth reading, and I (like many) look forward to the eventual ruling from the Supreme Court.

Supreme Court Delves Into Question Of Whether Or Not You Can Trademark ‘Disparaging’ Terms

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