An Overview of the New Rules for Disparaging Trademarks

In the aftermath of the Supreme Court’s decision in Matal v. Tam, rules regarding the registration of disparaging trademarks have been overturned.

Historically, when filing for a trademark you had to make sure your mark wasn’t disparaging. This basically meant that the United States Patent and Trademark Office (USPTO) could deny applications for marks that were immoral, deceptive, or derogatory towards certain groups.

This policy met significant resistance when, in 2011, the Asian rock group “The Slants” applied for a new trademark for their name. However, the USPTO pointed out that the term “slants” can be used as a derogatory name for Asians, and denied their mark.

The Slants fought the decision; first, by administrative appeal, and then by going through the court system. Finally, in June of 2017, the U.S. Supreme Court ruled in favor of The Slants. In this ruling, the Supreme Court also opened up the floodgates for all other disparaging marks, stating that this was an issue of free speech and thus protected under the U.S. constitution.

In this article, we’ll go over this opinion, and how specifically it affects the registration of new trademarks.

An Early Precedent: The 1946 Lanham Act

Paper documents stacked in archive.

To understand the USPTO’s original policy, we need to go back to the original trademark rules that the government established decades ago.

In 1946, the U.S. Government instituted the Lanham Act to regulate trademarks. The Lanham Act helped to prohibit trademark infringement, false advertising, and offensive trademarks.

Section 2(a) of the Lanham Act prohibits trademarks that “may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

It was this part of the Lanham Act that the USPTO followed when they originally rejected The Slants’ application.

What is a “Disparaging” Trademark?

As mentioned above, disparaging marks are any trademarks that were derogatory towards certain individuals, entities, or even groups of people in protected classes such as certain races or genders. Common marks prohibited by this ruling would include things that disparage certain ways of life, religions, racial groups, or specific individuals, the list was really endless.

Generally, these rulings were based on how the target individual, entity, or group viewed the mark, as well as how a “reasonable person” might view the mark. For this reason, cases would usually fall to witness testimony and the discretion of the judges.

Fluidity of the Definition of “Disparaging”

Contextualized this way, you can probably see the main issue of the debate. Written the way that it was, the definition of what’s “disparaging” was incredibly slippery, and often came down to the discretion of the judge hearing the case.

This can create problems as opinions on what’s offensive can vary widely from person to person. Also, definitions of what a “reasonable person” might consider offensive can also change over time. What was objectionable in the 1940’s may be a part of our mainstream conversations in 2018, and vice versa.

This fluidity was the crux of The Slants case, as they questioned who had the responsibility to decide what’s disparaging and what isn’t.

The Appeal

Scales of justice with judge gavel on table

When the USPTO initially rejected their application, The Slants began an appeal process to bring the case before a court. They argued that rather than being disparaging to Asians, using the name “The Slants” allowed them to reclaim a racial slur and use it as a symbol of pride.

Eventually, they appealed their case all the way to the United States Supreme Court (specifically in the case Matal v. Tam). The Supreme Court began arguments in the case in January of 2017. By June, they had reached a decision.

The Decision

Supreme courthouse in Washington. Blue sky behind.

The Supreme Court Judges were united in their ruling in favor of The Slants. All the judges agreed that rejecting The Slants’ trademark as “disparaging” was unconstitutional.

Freedom of speech

Four of the judges (Alito, Roberts, Thomas, and Breyer) reached their decision solely based on the free speech clause of the First amendment.

Judge Alito wrote in the opinion statement, “speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought we hate.”

Dissenting Views

Judges Kennedy, Ginsburg, Sotomayor, and Kagan went even further in their statement. They pointed out the danger of allowing a group to be silenced by a law.

If one group can’t speak because the majority finds them offensive, then all dissenting views are in danger of being silenced.

New Precedent

Therefore, the ruling in this case created a precedent for all disparaging trademark cases. The Supreme Court’s decision meant that the rules for disparaging trademarks are hereafter considered unconstitutional.

Other Disparaging Trademark Cases

Woman in leather jacket standing in front of motorcycle.

There are several other cases involving disparaging trademarks that were affected by the Matal v. Tam ruling.

The Washington Redskins

As mentioned earlier, one of the most talked-about cases involving a disparaging trademark involves the Washington Redskins.

After protests from the public and several Native American groups, the name “Redskins” was deemed a disparaging trademark. The USPTO cancelled the Redskins’ trademark registration in 2014 after the team had been using the name since 1932.

However, the Supreme court’s ruling in favor of The Slants changed everything. The Court’s ruling meant that denying disparaging trademarks was unconstitutional. Therefore, the Redskins’ case was dropped, and the Redskins were able to keep their trademark.

It’s important to note that the Supreme Court did not rule that the Redskins’ name wasn’t disparaging. Instead, the Court ruled that rejecting a name simply because it is disparaging is unconstitutional.

Dykes on Bikes

The women of the San Francisco lesbian motorcycle organization “Dykes on Bikes” were also happy to hear about the Matal v. Tam ruling. Their organization went through a similar battle to attain a trademark with the USPTO.

Dykes on Bikes submitted their application for a trademark in 2003. The USPTO denied the application, stating that the term “dyke” was a disparaging term for lesbians.

After a drawn-out battle and many appeals filed with the Trademark Trial and Appeal Board (TTAB), the motorcycle organization was able to make their case. They argued that the way they used the word “dyke” had changed and was no longer a disparaging term in the LGBT community. The were finally able to convince the TTAB to approve their application.

Although they won their battle, Dykes on bikes applauded the Matal v. Tam ruling, happy that other organizations wouldn’t have to go through the same process that they did:

“We agree wholeheartedly and for more than 12 years have been arguing at various levels of the United States judicial system that under the First Amendment we have protection for political speech, including the self-referential term “Dykes.”

Conclusion

Women's hands typing on computer

Until 2017, the USPTO rejected trademark applications that were disparaging to a person, group of people, or entity. However, in 2017, the Asian rock group “The Slants” won their disparaging trademark case against the USTPO in the U.S. Supreme Court.

The Court ruled in Matal v. Tam that it is unconstitutional for the USPTO to reject a trademark application simply because it is a “disparaging” trademark. Therefore, the Supreme Court set a new precedent for trademark applications: the USPTO can no longer decide which trademarks are disparaging or offensive.

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