What is Offensive? Not “Offensive” Trademarks in the US!

by Joshua B. Goldberg (Nath, Goldberg & Meyer, U.S.A.)

In an opinion affirming a decision on appeal from the Court of Appeals for the Federal Circuit (CAFC), the Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, the US federal law governing registration of trademarks. The portion of Section 2(a) of the Lanham Act at issue here states that the U.S. Patent and Trademark Office may prohibit the registration of marks that may “disparage… or bring… into contempt, or disrepute” any “persons, living or dead, institutions, beliefs or national symbols.”

In this specific case, an all-Asian American rock band named “The Slants” was denied federal trademark registration for their band name under Section 2(a) of the Lanham Act. In reaching this decision, the Trademark Office found that use of the name “The Slants” to promote an all-Asian rock band would disparage a substantial number of people of Asian descent. This decision was affirmed on appeal, first by the Trademark Trial and Appeal Board and then by a three-judge panel at the CAFC. The issue was suitably contentious, particularly in view of the constitutional issues raised, for the CAFC to reconsider the case en banc, at which point the CAFC held by a 9-3 majority that prohibiting the federal registration of disparaging marks violates the First Amendment.

In affirming (for a change) the CAFC’s en banc decision, the Supreme Court explained that trademarks are not government speech, as opposed to private speech, and thus not implicated by the First Amendment of the US Constitution. In reaching this decision, the Supreme Court decision warned, “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.” These concerns, in the Supreme Court’s view, were particularly important when considered in light of possible extension to other forms of intellectual property, such as copyright: “If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?”

The result in this case could have a wide impact on US jurisprudence, not only to other US trademarks deemed by some as offensive, such as the name for the Washington DC football team, but perhaps to other areas of intellectual property law as well. However, since a majority of the court was unable to agree on an exact legal standard to be applied in the future, it is unclear what such extensions may arise in the future. This is an area of the law that certainly bears watching moving forward!