Can I Use That Nasty Trademark?

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Jul 16, 2021

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Suppressed SpeechThere’s some good news for businesses that have an “in your face” attitude about their brands.

Until recently, it was the law of the land that you couldn’t use a trademark that was deemed by the Patent and Trademark Office (PTO) to be “disparaging.”

The Old Law

The passage of the Lanham Act in 1946 included 15 U.S.C. § 1052(a), which prohibits the registration of a trademark if it may

disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

When Simon Tam, front man and founder of the “Chinatown Dance Rock” band “The Slants” applied for a trademark on the band’s name, the trademark examiner denied it, claiming that many people of Asian descent would find the term disparaging.

Tam tried arguing that his use was intentional: he was trying to “reclaim” the term, somehow take it out of its negative context.

The examiner apparently figured your average person wouldn’t get that, and the denial stood.

The Debate

Tam appealed the examiner’s decision to the Trademark Trial and Appeal Board. The board affirmed the examiner’s decision.

He appealed again, to the Court of Appeals for the Federal Circuit (CAFC). He claimed that the law, §2(a), was an unconstitutional restriction of free speech.

The court disagreed, and again upheld the examiner. The court said Tam was free to use the name “The Slants,” but he couldn’t get a trademark on the name. The court ruled that since he could still use the name, the lack of a trademark was not a restriction on free speech.

Tam appealed yet again, requesting an “en banc” review by the CAFC (a review with all the judges on the Federal Circuit bench). The en banc review was granted.

The New Law

More than four years after Tam first applied for the trademark, on December 22, 2015, the majority on the court issued the following ruling:

We hold that the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

The majority decision held that trademarks are similar to copyrights. Plenty of offensive material is protected by copyright. The court held that the PTO failed to show any reason why trademarks should be treated differently than copyrights. The court found that trademarks are not merely “commercial speech” that could be regulated, but rather a form of “expressive speech” protected by the First Amendment.

What Now?

Unless the decision gets appealed to the US Supreme Court, the prohibition on “disparaging” trademarks no longer exists. It will be interesting to see in the coming weeks how creative people get about trying to register offensive trademarks.

This may also good news for the Washington Redskins, who have been involved in a court battle over the loss of trademark rights for the team name, which some Native Americans find disparaging.

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