Offensive Trademarks are Now OK

Offensive TrademarksThe United States Supreme Court made a landmark ruling today, striking a blow for free speech and opening the door for new trademarks.  The real question: should free speech outweigh government protections for offensive speech?

Simon Tam and his rock band The Slants filed a trademark application with the United States Patent and Trademark Office to protect the band’s name. According to Mr. Tam, “The Slants” was an attempt to “reclaim” the slur term on behalf of Asian people and drain its denigrating force.

The Trademark Disparagement Clause

The USPTO and the trademark examiner ruled that the band’s name was offensive and should not be granted trademark protection.  Specifically, “The Slants” was not a protectable mark under the “disparagement clause” of the Lanham Act.  Section 1052(a) of the Act bars a trademark that “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”

The USPTO relied upon the disparagement clause when it canceled the Washington Redskin’s trademark in 2015.

Free Speech vs. Offensive Speech

The Slants argued the USPTO violated their First Amendment Free Speech rights. The USPTO countered that a trademark was “government speech.”  The Obama administration weighed in before President Donald Trump took office, arguing that the disparagement clause “simply reflects Congress’ judgment that the federal government should not affirmatively promote the use of racial slurs and other disparaging terms by granting the benefits of registration.”

The Supreme Court sided with Simon Tam and The Slants, finding the disparagement clause is unconstitutional.  The justices ruled: “We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

What Does This Change For Trademarks?

The Tam ruling opens the door for many new trademarks that the USPTO would normally reject. It also follows that many of these new trademarks will be highly offensive to many different groups.  One such trademark: the Washington Redskins.

Importantly, businesses like The Slants and the Redskins can use their names without trademark protection. However, a federal trademark gives your business legal benefits, like nationwide notice and suing trademark infringers.  This translates to millions of dollars if someone misuses your logo or brand name.

Any business taking advantage of this shift in trademark law should consult with a business law attorney and think carefully about their reputation in the community.  A trademark that offends potential customers may not make you stand out in the desired fashion.

If you have questions about how the Lanham Act affects your business or how you can get trademark protections, contact one of the business law attorneys at the BiState Law Center.  Our award winning attorneys focus on creating the right solution for you.