Government Should Deny Offensive Trademarks

| by Nicholas Roberts

The Supreme Court may soon hear two cases in which the federal government does not seek to register trademarks for names it considers disparaging.  The two trademarks in question belong to the Washington Redskins football team and an Asian-American band called The Slants.

Under the Lanham Act, signed into law by Congress in 1946, the U.S. Patent and Trademark Office (USPTO) currently prohibits many categories from being registered -- such as disparaging names. But this does not mean that they cannot be used or that they are denied robust legal protections, as professor Christine Farley explains in a New York Times opinion.  Federal trademark protection confers enhanced benefits and protections which unregistered trademark holders do not have, but it hardly denies the latter's right to free speech, as opponents of the USPTO's current approach claim.

However, the 70-year-old legislation is under threat, as a Federal Circuit Court decision in December 2015 held that the statutory ban on offensive trademarks was an unconstitutional violation of free speech.

While this approach has arguably led to the USPTO's ability to pick and choose among the trademarks to deem what it finds offensive, it is appropriate as a neutral approach in the current day and age.  If a firm wants to use a racial slur as its trademark, it is free to do so; the USPTO would simply be unable to issue a registration, as Farley notes.

This is the same opinion that the USPTO has put forward in relation to the two cases.  Arguing that the Supreme Court should grant review of the cases, the USPTO said that the Federal Circuit Court, which had invalidated the statutory ban on disparaging trademarks, had overturned "longstanding federal statutory provision," according to Jones Day of Lexology.

The USPTO further argued that the Constitution "does not require Congress to open the federal trademark registration system to racial epithets," and that the U.S. government's interest in declining to use its resources to encourage disparaging trademarks is in the facilitation of commerce.

It is quite possible that the Circuit Court's decision will be upheld by the Supreme Court; as Noah Smith notes in the Albuquerque Journal, free-speech protections have only grown over the past 20 years or so.

But the USPTO has a very compelling argument to make.  In 2016, the use of offensive, derogatory, or prejudiced terms and/or imagery is highly discouraged in public.  The use of an abusive or racist trademark indicates to the USPTO that the holder has some kind of personal, ideological axe to grind. Therefore, it rightly calculates that registering trademarks of this category would tie up the office's resources at the expense of individuals pursuing federal trademark protection for purely commercial reasons.

That image is complicated by the case of The Slants, whose founder, Simon Shiao Tam, gave the name to the band in order to "reclaim Asian stereotypes," rather than appealing to the phrase as a disparaging one.

Otherwise the basic argument of the USPTO is perfectly sound; unregistered trademark holders are not forbidden from using disparaging trademarks and are still offered substantial legal protections.  They just can't register with the USPTO.

Click here for the opposing view on this topic.

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