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

from the not-an-easy-question dept

A 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 that point 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:

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.

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.

Filed Under: disparaging, first amendment, redskins, simon tam, the slants, trademark, us pto


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  • identicon
    Anonymous Coward, 19 Jan 2017 @ 1:41pm

    Damn....

    I need some popcorn!

    Don't worry Mike... good job ole chap. Yes I was one the asses bitching at you about your original stance on this issue but you came around! Welcome Home Prodigal Son!

    Now, if i could just fix your other issues... naw... we can save that fun for another day!

    Cheers!

    reply to this | link to this | view in chronology ]

  • icon
    discordian_eris (profile), 19 Jan 2017 @ 1:43pm

    Heh

    I predict that the Supremes will rule for the Slants.

    I also predict that the day after someone will trademark "Trumps Sucks Dick". Legal shenanigans will ensue, suits will be filed. In retaliation someone else will get a trademark on the following and make a killing selling it.

    "Trump sucks giant hairy green donkey dicks oozing purple puss".

    If the US won't let them trademark it, I bet the EU will.

    reply to this | link to this | view in chronology ]

  • icon
    art guerrilla (profile), 19 Jan 2017 @ 2:30pm

    um, are we adults ? ? ?

    ...or a-dolts ? ? ?
    if adults, we should be able to get all meta and discuss issues ABOUT the nigger-word by actually (*gasp* i know, right?) saying/writing 'nigger' and not using the childish 'n-word' stand-in...
    but, we're not weally adults any more, are we; just infantile consuming maws greasing the gears of Empire...
    ain't that a b-word...
    hee hee hee
    ho ho ho
    ha ha ha
    ak ak ak

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 19 Jan 2017 @ 3:01pm

      Re: um, are we adults ? ? ?

      Honestly words are powerless until people give them power. With enough effort we could get the word adults to be disparaging. I think the aversion to using nigger in America is a result of people being easily offended and/or attributing a negative connotation with it. I'm white Anglo-Saxon and it wouldn't bother me to be called cracker, hillbilly, or any other range of words someone might use to describe or taunt me. But the reason I am not offended is because I know those words don't really apply and I have a strong enough self-worth and self-image that I don't require confirmation from others to establish who I am.

      Now saying nigger or slant or (insert disparaging word here) with the intent to offend is rude. Also because I know the word might/will be interpreted as disparaging I won't refer to people using it. And people should be more careful to not offend others whether intentional or not. What is what really being an adult is. Taking responsibility for your words and actions.

      I'm not trying to use the argument that because I'm fine with it everyone should be. Just trying to show why words are powerless until you and others put power into the meaning of them.

      So I'm sure I will get blasted in the comments for this post but oh well that is my two cents.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 20 Jan 2017 @ 10:25am

        Re: Re: um, are we adults ? ? ?

        Your post is well thought out. But....

        Why can't I use the word "negro" when it is a scientifically correct word?

        At one point or another, every word will offend somebody.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 20 Jan 2017 @ 1:47pm

          Re: Re: Re: um, are we adults ? ? ?

          Never said someone can't use a word. The thing to keep in mind is the intention of using a word and being respectful of others.

          Meanings of words change over time. Gay used to mean just happy, then it became derogatory, and now it's becoming a non-derogatory word among certain groups and people. Some groups say the word gay with pride while for others it still denotes something negative.

          When communicating you have to be honest with what are your intentions for the words you use as well as understand your audience. It is just being responsible for your own actions. At the same time people need to not become offended so easily.
          Sometimes people are rude while other times a message was simply misunderstood by the receiver.

          reply to this | link to this | view in chronology ]

  • icon
    hij (profile), 19 Jan 2017 @ 2:36pm

    Common terms of disparagement

    A disparaging term would have to be a common term, by definition, to be classified as a disparaging term. Otherwise nobody would know what it means, and the term would not be disparaging. If that is the case then the trademark application should carry the extra burden placed on applications that involve common terms. The term in question would have to take on a secondary meaning in order to qualify for trademark protection. Once the term takes on the secondary meaning then it is not necessarily a disparaging term.

    reply to this | link to this | view in chronology ]

  • icon
    Roger Strong (profile), 19 Jan 2017 @ 2:38pm

    *

    There's also the issue of trademarking a disparaging term to prevent others from using it to disparage you. Allowing the trademark could block the First Amendment rights of others.

    For example the term President* Trump. You know, like how sports and other achievements - while still legitimate - but are tainted by some unusual conditions get noted with an asterisk.

    If lots of people used the term (which rarely stops a term from being trademarked) and President* Trump were thin-skinned, could he trademark it to stop its use with regard to his "industry" (government)?

    reply to this | link to this | view in chronology ]

    • icon
      compujas (profile), 23 Jan 2017 @ 9:14am

      Re: *

      Does trademarking something stop someone from using the trademarked term when referring to what the trademarked term was trademarked to refer to?

      In slightly less confusing terms...if President Trump trademarked "President* Trump", would it actually stop anyone from using the term "President* Trump" if they were in fact referring to President Trump?

      Just because Apple trademarked "iPhone", I can still say iPhone if I'm talking about the iPhone. But I can't release a new phone and call it the iPhone because it wouldn't be referring to the trademarked iPhone.

      reply to this | link to this | view in chronology ]

  • identicon
    SpaceLifeForm, 19 Jan 2017 @ 3:23pm

    An organization with a marching band

    Say we have a parent teachers
    organization, at a school named
    Universal Saints. And this
    organization has also created a
    small marching band to turn out
    at school events to support the
    school and all involved at the school.
    Now, this marching band is still
    growing, so it mainly composed of
    members that play tube instruments.
    The parents and teachers of the band
    want to come up with a name for the
    band, and they want to trademark their band name. Since it is limited at this time, they came up with
    USPTO Tube Blowers.

    reply to this | link to this | view in chronology ]

  • icon
    TechDescartes (profile), 19 Jan 2017 @ 8:58pm

    Bureaucratic Singularity

    "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."

    DHS has a trademark on TSA Pre√. Does this mean we've reached the bureaucratic singularity?

    http://tsdr.uspto.gov/documentviewer?caseId=sn86107248&docId=ORC20140701005456#docIn dex=0&page=1

    reply to this | link to this | view in chronology ]

    • icon
      Ninja (profile), 20 Jan 2017 @ 5:45am

      Re: Bureaucratic Singularity

      All physics as we know won't properly define and explain this event. I'm afraid we'll be swallowed by the inevitable black hole this aberration has spawned soon.

      reply to this | link to this | view in chronology ]

  • icon
    Berenerd (profile), 20 Jan 2017 @ 5:12am

    So when it the "Redskins" losing their Trademark?

    What about the Butthole Surfers?

    Fags in drag?

    I could go on. All are legitimate things.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 20 Jan 2017 @ 6:35am

    Given the Supreme Court has ruled that its OK to allow states to pick and choose what groups get to put their message on license plates, a ruling that has also been used to uphold denying anything they don't like as personalized license plates I suspect The Slants will lose this one. Yes, there are some differences but it does show a bias towards allowing governnment censorship.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 20 Jan 2017 @ 4:20pm

    A slippery slope

    Banning the use of the Slants is going down a slippery slope. :)

    reply to this | link to this | view in chronology ]


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