Disparaging, Slanderous, Racist, etc, Trademarks Can Now be Registered - it's Free Speech!

(from Bloomberg news)


The U.S. Supreme Court said the federal government can’t constitutionally withhold legal protections for trademarks seen as disparaging, throwing out a 70-year-old provision as a free-speech violation.

The Monday ruling was unanimous, although the court splintered in its reasoning. The decision is a victory for an Asian-American dance-rock band called The Slants. The ruling could help professional football’s Washington Redskins, which have been engaged in a similar dispute over claims that the team’s name is a racial slur.

Washington Redskins owner Dan Snyder said in an emailed statement that he was "thrilled," while the American Indians who were disappointed in Monday’s ruling said it doesn’t take away from the finding that the team’s name is a derogatory term.
The ruling strikes down a 1946 measure that barred federal officials from putting disparaging trademarks on a government registry. The Supreme Court said the registration decisions don’t qualify as government speech, a classification that would have given officials broad power to pick and choose which messages to protect.

Writing for the court, Justice Samuel Alito said the federal trademark office had undermined the government-speech argument by registering other disparaging names, as well as trademarks on opposite sides of public policy issues.

‘Babbling Prodigiously’
"If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently," Alito wrote. "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."

Justices Anthony Kennedy and Clarence Thomas wrote separately, agreeing with much of Alito’s reasoning but not all of it. Justices Ruth Bader Ginsburg, Sonia Sotomayor and Elena Kagan joined Kennedy’s opinion. New Justice Neil Gorsuch didn’t take part in the case, which was argued before he joined the court.

Slants founder and bass player Simon Shiao Tam says his band’s name was designed to reclaim a term that has been an anti-Asian slur. The U.S. Patent and Trademark Office nonetheless refused to register the trademark after concluding the name was disparaging to a substantial number of people of Asian ancestry.

The Obama administration defended the provision, saying it didn’t prevent people from using a name or image and had no effect on the separate trademark protections available under state law. The case was argued before President Donald Trump’s inauguration.

Government Benefits
The Obama administration also contended that federal registration is a government benefit that provides additional protections for trademarks but doesn’t have to be conferred on all applicants.

The benefits of federal registration include exclusive rights in parts of the country where no one had previously been using the name or image. Registration also puts would-be competitors on notice that a trademark is legally protected, including the use of Customs and Border Protection agents to seize imports of knock-offs.

The U.S. prohibition on granting registration to offensive trademarks was consistent with international laws, said Jonathan Moskin, a trademark lawyer with Foley & Lardner in New York. He called it “puzzling” that the Supreme Court didn’t address the argument that the restrictions never limited speech, only the ability to obtain a government stamp on a trademark.

The practical effect of the high court ruling is that the federal government will be required to grant trademark protection to racial slurs, crude comments about women’s anatomy and offensive religious images, Moskin said.

‘Coarsening’ of Speech
“It’s hard not to look at it in the context of the current culture wars and the general coarsening of public speech,” Moskin said. “There will be all sorts of white supremacist types who will register anti-Muslim slurs. What good will come from that?”

The ruling also is likely to affect a separate provision barring trademark registration for matter deemed “immoral, deceptive or scandalous,” said trademark lawyer Anthoula Pomrening of McDonnell Boehnen Hulbert & Berghoff in Chicago. “We don’t know where the line is going to be.”

Tam contended the provision unconstitutionally discriminated against some trademark owners based on the viewpoint they expressed. He also said the provision was too vague, giving trademark examiners license to make subjective and even arbitrary decisions. In a statement on the band’s website, the group said it was “beyond humbled and thrilled” at the decision.

“The Supreme Court has vindicated First Amendment rights not only for our The Slants, but all Americans who are fighting against paternal government policies that ultimately lead to viewpoint discrimination,” said the group, which said its newest release “The Band Who Must Be Named” is directed to the trademark office.

Driving Social Change
“Music is the best way we know how to drive social change: it overcomes social barriers in a way that mob-mentality and fear-based political rhetoric never can,” the group wrote. “Irony, wit, satire, parody…these are essential for democracy to thrive.”

The Redskins are challenging a trademark office decision that canceled some of their trademarks followings complaints from American Indians. An appeals court case on the dispute was put on hold pending Monday’s high court decision.

Lisa Blatt, the team’s lawyer, said in an email, “The Supreme Court vindicated the team’s position that the First Amendment blocks the government from denying or canceling a trademark registration based on the government’s opinion.”

Amanda Blackhorse and four other native Americans who successfully sought to have the Redskins trademarks canceled called the court’s decision narrow but disappointing.

“It focused solely on whether the disparagement provision of the law was constitutional,” they said, “but the court did nothing to cast doubt on the prior judicial findings that the Washington NFL team’s name and trademarks disparage Native Americans.”

The case is Matal v. Tam, 15-1293.