Disparaging trademarks

« previous post | next post »

"Supreme Court rules government can't refuse disparaging trademarks", ESPN:

The Supreme Court on Monday struck down part of a law that bans offensive trademarks in a ruling that is expected to help the Redskins in their legal fight over the team name.

The justices ruled that the 71-year-old trademark law barring disparaging terms infringes free speech rights.

The ruling is a victory for the Asian-American rock band called the Slants, but the case was closely watched for the impact it would have on the separate dispute involving the Washington football team.

The opinion's "syllabus" is here:

Simon Tam, lead singer of the rock group “The Slants,” chose this moniker in order to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. Tam sought federal registration of the mark “THE SLANTS.” The Patent and Trademark Office (PTO) denied the application under a Lanham Act provision prohibiting the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U. S. C. §1052(a). Tam contested the denial of registration through the administrative appeals process, to no avail. He then took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.

Held: The judgment is affirmed.

Some reelvant LLOG posts:

Fenimore Cooper, call your office“, 10/7/2003
The conventions for expressive content words“, 10/11/2003
Of limes and racial epithets“, 1/18/2004
Mascot names and etymology“, 5/25/2004
Disparaging trademarks and the lexicography of tools“, 7/16/2005
Adverbial license“, 7/17/2005
The origin of redskin“, 3/26/2006
When should linguists disclose a conflict?“, 12/15/2009
The Slants vs. the USPTO“, 8/21/2013
"'Redskins' ruled disparaging", 6/18/2014



  1. DWalker07 said,

    June 19, 2017 @ 11:53 am

    "… Where seldom is heard a discouraging word
    And the skies are not cloudy all day……"

    Or should that be "a disparaging word"?

  2. Neal Goldfarb said,

    June 19, 2017 @ 2:34 pm

    Nah, disparaging words are heard pretty much all the time.

  3. Tom V said,

    June 19, 2017 @ 8:17 pm

    Any word on what River Tam thought about all this?

  4. Yku said,

    June 20, 2017 @ 4:41 am

    So now it is open slather for neo-Nazi groups to trademark products ?

    [(myl) It's always been possible for arbitrarily hateful brand names, slogans, pictures, etc. to be used in the marketplace — or reclaimed by those they're directed at, as in the case of The Slants. What's now possible is for such names, slogans, etc. to be given government protection from counterfeiting or frank re-use by competitors. ]

  5. Joseph F Foster said,

    June 20, 2017 @ 6:59 am

    We do not have in the United States of America a constitutional right not to be offended and, in general and within broad limits, government has no right to protect any chosen people or peoples from being offended by any less chosen people or peoples. Offense is in the eye of the beholder, the ear of the behearer, and the mind or disposition of the betaker.

  6. D.O. said,

    June 20, 2017 @ 11:42 am

    @Joseph F Foster. Yes, but see Texas vanity plates case. From a layman's perspective, license plates seem to give stronger governmental imprimatur to the speech than awarding a trademark protection, but it is still a hair-splitting, not a straight first principles decision.

  7. J.W. Brewer said,

    June 20, 2017 @ 12:23 pm

    Just as an amendment to myl's response to yku – trademarks can be and are enforced by the courts in the U.S. (both state and, given a proper jurisdictional basis, federal) even if they are not federally registered. Federal registration gives some substantial advantages, worth fighting about if you are a business enterprise that is or hopes to be of a certain size, but the notion that a mark as well known in the marketplace as REDSKINS for a professional football team (and ancillary merchandise) would suddenly lose all legal protection without a federal registration is far-fetched.

    OTOH, for a rock band to worry at an early stage of their career about federal trademark registration suggests to me that they are more interested in t-shirt sales than making music worth hearing. But obviously people are free to pursue their legal rights if they want to and others can draw whatever conclusions are to be drawn. Back in the day when punk and/or metal bands sort of competed to come up with outre or deliberately offensive names, nothing good would have happened to the bass player who raised his hand to suggest that a particular name should be eliminated from consideration because of potential difficulties in securing trademark registration.

  8. Daniel Barkalow said,

    June 20, 2017 @ 4:27 pm

    @J.W. Brewer: They attempted to register the trademark when a bunch of their fans showed up for a Slants show and were disappointed that it was an entirely different band with the same name. While most trademark complaints are about merch, that's just because venues booking and promoting acts check beforehand, so there's no visible enforcement needed.

  9. Andrew Usher said,

    June 20, 2017 @ 5:37 pm

    There's a third obvious reason the band might pursue this legal case – publicity. Presumably a lot more people have heard of The Slants than would have without the case.

    D.O.: Actually, I think it's even stronger. While vanity license plates are clearly a form of speech (even if regulated), trademarks are not – they are an authorisation to restrict the speech of others (as are copyrights), for what we believe are good reasons. As such I can't understand how the First Amendment could protect them – not that I'm justifying the overturned law.

    k_over_hbarc at yahoo.com

  10. Jerry Friedman said,

    June 20, 2017 @ 8:10 pm

    Joseph F. Foster: There's no Constitutional right to trademark protection either. And I'm not a lawyer, but as far as I can tell, states do have the power to protect people from being offended in certain ways, such as public nudity and obscene billboards.

    Daniel Barkalow: Was the other band's name offensive?

    I suppose they'll have to change their name to the Slopes or something now.

  11. J.W. Brewer said,

    June 20, 2017 @ 11:03 pm

    Here's a rival automotive metaphor for you (since zero Justices bought the argument implied by the license-plate analogy): "Just because the government cannot refuse to register a car bearing a racist bumper sticker does not mean it cannot prohibit others from vandalizing that racist bumper sticker." Put slightly differently, if the government decides to make it a misdemeanor (or whatever) to vandalize someone else's car and includes defacing a bumper sticker within the definition of vandalism, it can't draw content-based lines saying that some bumper stickers will be protected from vandalism but others (the "disparaging, scandalous, or immoral" ones) won't be. (Prof. Manta also gets into why it would be a problem, from a U.S. First Amendment perspective, to condition copyright protection on the respectability of the text sought to be protected, which may or may not satisfactorily address Andrew Usher's concern.) http://www.scotusblog.com/2017/06/symposium-cacophony-trademarks-not-government-speech/

  12. DWalker07 said,

    June 21, 2017 @ 2:06 pm

    The term "redskin" or "Redskins" doesn't have much of a non-offensive meaning, while the word "slant" or "slants" has.

    On a slightly-related note, I wonder why Billy Joel ™ trademarked his name. Would we confuse another performer who also used the same name?

  13. D.O. said,

    June 21, 2017 @ 7:06 pm

    It just occurred to me (not a lawyer, didn't follow the case) that the whole freedom of speech argument is upside down. Trademark protection (registered or not) actually restricts speech of non-trademark holders. Government refusal to give this protection to certain words or phrases actually increases the freedom of speech. The Slants weren't denied any speech rights, they choice of name simply was commercially less valuable.

    This reminds me of Chief Justice Roberts trick from a few years back when denying states the right to establish matching funds for running for office (if one candidate collects $X, another candidate is allowed to have $Y from the state) he reasoned that because matching funds cancel effectiveness of another candidate's speech (money=speech theory I except as a given for current purposes) they run afoul of the First Amendment. I spare you a rant here. I just ask you to admire the cleverness of our Chief Justice.

  14. D.O. said,

    June 21, 2017 @ 7:08 pm

    Sorry for so many spelling mistakes.

  15. Chas Belov said,

    June 22, 2017 @ 2:30 am

    I seem to recall this also came up for Dykes on Bikes, and a search of the USPTO database does come up with DYKES ON BIKES W M C (Owner (APPLICANT) SAN FRANCISCO DYKES ON BIKES WOMEN'S MOTORCYCLE CONTINGENT AKA DYKES ON BIKES non-profit corporation CALIFORNIA).

    The dates involved do seem to indicate some kind of delay.

    Filing Date July 31, 2003
    Published for Opposition January 24, 2006
    Registration Date October 30, 2007

    @J.W. Brewer: As a long-time fan of The Slants, I assure you they do care about the quality of their music. Whether it's to your taste or not…

  16. DWalker07 said,

    June 22, 2017 @ 9:27 am

    @D.O.: "The Slants weren’t denied any speech rights …"

    Yes they were! They were denied the right to call themselves what they wanted (since they wanted to trademark their name).

  17. January First-of-May said,

    June 23, 2017 @ 5:42 am

    On a slightly-related note, I wonder why Billy Joel ™ trademarked his name. Would we confuse another performer who also used the same name?

    There was a funny case in the early 2000s when a guy changed his legal name to Harry Potter, then proceeded to publish a series of fantasy novels, with his new name prominently displayed on the cover.
    Don't recall what happened (if anything), or indeed if trademark protection was involved at all, unfortunately.

  18. Andrew Usher said,

    June 23, 2017 @ 5:58 pm

    I and D.O., who seems to have just come up with it independently, don't think that having a trademark is 'free speech'. You don't need a trademark to say anything, including commercially; to the extent that being able to claim a trademark is speech at all, it is arguably government speech. It seems the Court disagreed; they were unwilling or unable to see the distinction between the _content_ of a trademark and the fact of its being a trademark, while the government's case did.

    I mentioned this distinction could be extended to copyright (and was at one time), but the acts automatically giving copyright to all works make that legally impossible.

    k_over_hbarc at yahoo.com

  19. maidhc said,

    June 24, 2017 @ 8:07 pm

    I would imagine Billy Joel trademarked his name to prevent Billy Joel impersonators from using names like The Billy Joel Experience.

RSS feed for comments on this post