Trademark Office Takes Dispute Over “Scandalous” Trademarks To Supreme Court

While the law prohibits the U.S. Patent and Trademark Office from registering “immoral, deceptive, or scandalous” or disparaging trademarks, a federal appeals court recently ruled that this law is too restrictive and unconstitutional. Now the USPTO is asking the nation’s highest court to chime in on an issue that could impact countless rejected or cancelled trademarks, including that of the Washington Redskins.

This specific case involves the trademark for rock band The Slants. All members of the Oregon-based group are Asian-American and they are fully aware that their band name is also used as a pejorative. In fact, the band argues that the name was chosen, in part, to offer a multilayered play on race, culture, and music.

When the band tried to trademark the “Slants” name with the USPTO, the application was rejected because of the Lanham Act’s prohibition on registering “immoral, deceptive, or scandalous” marks, along with any that may “disparage… persons, living or dead, institutions, beliefs, or national symbols.”

Because rejecting or canceling a trademark application doesn’t prevent the applicant from using that mark — it just means there are no protections against someone else using the same name — courts had previously held that the Lanham Act was not overly restrictive of the First Amendment right to free expression.

But in Dec. 2015, the D.C. Circuit Court of Appeals ruled that the 70-year-old law was indeed an overreaching form of content-restriction on the part of the government. That, by deeming something offensive or disparaging — and thus unable to be trademarked — the government is expressing its disapproval of a name or term.

“When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint,” read the majority opinion in that case. “The legal significance of viewpoint discrimination is the same whether the government disapproves of the message or claims that some part of the populace will disapprove of the message.”

Last week, the USPTO petitioned [PDF] the U.S. Supreme Court, claiming that the Lanham Act’s disparagement provision “does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark. Nor does it restrict a mark owner’s common-law trademark protections.”

Instead, contends the USPTO, the law merely directs the Trademark Office to deny the benefits of registration to such marks.

“The court of appeals disregarded this Court’s teaching that, when Congress does not restrict private speech or conduct, but simply offers federal benefits on terms that encourage private activity consonant with legislative policy, it has significant latitude to consider the content of speech in defining the terms on which the benefits will be provided,” explains the petition.

The Supremes are not obligated to take up this matter. If they choose to deny the petition, it means the appeals court ruling stands, giving other holders of canceled trademarks the opportunity to have their applications reconsidered.

Perhaps the most well-known of these disputes involves the Washington Redskins. The NFL team, which had successfully weathered previous attempts to have its trademark — viewed by many as offensive to Native Americans — canceled, but in 2014 the USPTO decided that the mark was in violation of the Lanham Act. That decision was upheld in 2015 by a U.S. District Court judge.

As mentioned above, the cancelation of the team’s trademark doesn’t mean it would have to change its name. It would just mean that anyone could use the name, including loudmouth little kids from Colorado: