A New “Slant” on Disparaging Trademarks
Portland, Oregon based rock band The Slants won back the right to trademark their name. The U.S. Patent & Trademark Office had denied Simon Tam and his Asian-American bandmates a trademark on grounds it disparages that ethnic group. Tam appealed to the Trademark Trial and Appeal Board. Rather than be insulted by what was widely considered a slur to people of Asian descent, Tam reframed and rebranded the name as a badge of pride. He lost, then appealed to the U.S. Court of Appeals for the Federal Circuit. A three judge panel initially upheld the TTAB. One judge notably dissented, citing First Amendment free speech grounds for allowing the mark to proceed. Tam appealed to have the entire bench rehear the case. Three times was a charm and the case was reversed. In a related case, Native American interest groups have been trying to use this same law to cancel the Washington Redskins trademarks.
The U.S. Supreme Court unanimously sided with Tam. Writing for the Court, Justice Alito agreed that certain speech may be offensive. He acknowledged and admitted “the commercial market is well stocked with merchandise that disparages prominent figures and groups.” However, he reminded us that “The proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought that we hate.” (Oliver Wendell Holmes, writing for the Supreme Court in 1929 in United States v. Schwimmer. Wrote Alito, the “disparagement clause is not an anti-discrimination clause; it is a happy-talk clause.” In other words, it’s not the Trademark Office’s place to pass judgment or to legislate tolerance. Read the opinion here: Matal v. Tam
Accordingly, examiners may no longer refuse or cancel registration on grounds of disparagement. “The portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply.” (Trademark Exam Guide 1-17). The Court’s decision will open the door for the Slants and the Redskins to reclaim their trademarks.