Trademarking Racial Slurs, Swear Words and Swastikas

The disparaging restriction is out. Is the scandalous clause next?

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The Lanham Act is a federal law governing patents and trademarks. Its provisions describe what types of words, phrases and ideas can be afforded federal trademark protection, as well as what cannot. Since its enactment in 1946, trademarks have not been permitted where they are immoral, deceptive, scandalous or disparaging.
 
What this means has been the subject of case law analysis for years. An application for a trademark with the U.S. Patent and Trademark Office (PTO) is assessed by a staffer reviewing the application, based on guidance from PTO’s internal policies. For 70 years, the disparagement prohibition has largely withstood challenge and been interpreted with a degree of deference.
 
But recently, the disparagement clause received a death blow. The U.S. Supreme Court decided in Matal v. Tam that the Lanham Act’s rejection of proposed trademarks for being amounts to precisely the kind of viewpoint censorship prohibited by the First Amendment.
 
The decision came in a case arising from a Portland, Oregon, rock band who sought to trademark their name: The Slants. All four members of the band are Asian-American, a fact that precipitated the PTO denial of their application based on the disparagement clause. The band appealed, claiming violation of their First Amendment free speech rights. They acknowledged the historically disparaging nature of the term they chose, noting their intention to “reclaim” a racial slur by using it on their own terms. The PTO had applied its standard of assessing that a “substantial composite” of the “referenced group” (in this case, presumably Asian-Americans) would find the term offensive.
 
Constitutional legal analysis can present a kind of logic shell game, carving out rules and exceptions that leave many of us in a puzzled haze. Here, the Court left no quarter, holding that the disparagement clause of the Lanham Act violates the free speech clause of the First Amendment. Justice Alito, writing the unanimous portion of the Court’s opinion, states, “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 itself offensive or disagreeable.”
 
For those who find that The Slants’ membership in a historically disparaged community allows for more righteous intent, this is not only irrelevant to the Court’s ruling, but precisely not the point. The concurring opinion notes that preference for a particular intent is “the essence of viewpoint discrimination”–unacceptable censorship on behalf of one perspective over another.
 
Therefore, it’s not only those who have been historically disparaged who may utilize an “offensive” term, but also others, including those who may even seek to offend. For example, the Washington Redskins football team, which has been fighting since 2014 over their cancelled trademark, will likely have their trademark rights restored. Whether the team should retain the name is another matter, but it may no longer be denied trademark protection on the basis that some find the name insulting.
 
So, the disparagement clause is out. The Slants are in. Now what?
 
There has been some activity in applications for previously banned trademarks. Seven applications were filed in the two months following the Tam decision to trademark variations on the N-word, as well as one for the swastika. Random pursuits to trademark a word or symbol won’t fly; it’s still required that use of the term or phrase be unique and associated with the applicant’s brand. As to the swastika, that image has been in broad use and would be hard to claim as identifying to a degree that allowed for exclusive ownership.
 
“Most corporate clients don’t have the types of marks that have this problem,” says Jamil Alibhai, a trademark and patent litigator at Munck Wilson Mandala in Dallas. Alibhai notes the Supreme Court decision is significant, but yet not likely to have much impact on his firm’s practice. “A trademark lawyer in our office was telling me that she’s never had a rejection based on the disparagement clause.”
 
The “scandalous” clause of the Lanham Act remains unclear. In addition to the First Amendment issue, Alibhai observes, “the potentially bigger issue is that the tests that the PTO has been applying have been vague. It’s not clear what falls within profane or sexual or otherwise objectionable marks. It’s them deciding whether it’s profane based upon some standard that’s not certain.”
 
A case currently awaiting federal appellate outcome addresses a clothing designer seeking to trademark his company’s brand:  FUCT. “The other one that I’ve heard of is where someone was wanting to register the name ‘Cocksuckers’ for lollipops,” Alibhai adds.
 
If you have applied for a trademark and were denied on the basis of disparagement or any of its related concepts, talk to a trademark and patent lawyer about your case and how changed circumstances may affect you. 

Texas

For 70 years, the disparagement prohibition has largely withstood challenge and been interpreted with a degree of deference. But recently, the disparagement clause received a death blow.

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