It appears the floodgates may open on the abilily to trademark offensive words.
They are a self-described “Chinatown Dance Rock” band that wanted to trademark their name: “The Slants.” On Monday, the Supreme Court of the United States decided that name, although disparaging, should be allowed trademark protection. In the “Slants case,” Matal v. Tam, the Court struck down a ban on disparaging trademarks. The ruling has been highly anticipated for its implications on the Washington Redskins’ efforts to keep its controversial name.
The “disparagement clause” of federal trademark law is based on the Lanham Act, a 71-year-old federal statute signed into law by President Truman which prohibits trademarks that insult any group. In 2011, the U.S. Patent & Trademark Office (USPTO) denied the Slants’ application citing the Lanham Act for its rationale.
The band’s founder and bassist, an Asian-American named Simon Tam, argued that the band’s name was aimed at empowering Asian Americans not offending them. Tam defended the band’s name as an attempt by a person of color to reclaim a slur and strip it of any intended weaponization.
In a unanimous 8-0 decision, SCOTUS held that “free speech may not be banned on the ground that it expresses ideas that offend.”
“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,” Alito wrote in part of the opinion, joined by Chief Justice John G. Roberts Jr. and Justices Clarence Thomas and Stephen G. Breyer.
Justices Ruth Bader Ginsburg, Sonia Sotomayor and Elena Kagan joined Justice Anthony M. Kennedy’s concurring opinion which stated:
“A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.”
Justice Neil Gorsuch did not weigh in on the case.
In 2014, the trademark office cancelled the Washington Redskins’ trademark ruling that the teams’ name offends Native Americans. The team filed an appeal which was put on hold awaiting the Slants case ruling. The team’s arguments on appeal seem to align with the Court’s ruling in the Slants case, signaling an impending legal victory for the Redskins. However, the outcome in the Redskins case remains uncertain.
A lawyer representing the team told the Washington Post that the Slants case vindicated the team’s position but it will still be up to the trademark office to decide if a given mark should be refused registration for reasons other than disparagement. For instance, the question remains whether trademark protection can be denied for marks that are considered “offensive” (as opposed to merely disparaging). The USPTO can also deny registration to marks under the “immoral” or “scandalous” provisions of Section 2(a) of the Lanham Act, in addition to other legal bases.
The Washington Post notes that the Slants were not happy to be associated with the Redskins. In Mic, Tam, nonetheless refutes critics’ arguments that the SCOTUS decision is a slippery slope that will open the floodgates to applications for all sorts of potentially offensive remarks.
“As a POC, I have never once heard about someone seeking to register their trademark before using a toxic term,” Tam said. “No, they simply use it. And the idea that our market will be flooded by people who just want to register marks on a whim is ridiculous… people have to have an established business purpose, pay the fees, go through the paperwork and have their information in public. Very few would want to do that if establishing a legitimate business.”
It’s worth noting that the trademark office has been wildly inconsistent in deciding what constitutes an offensive term. Companies such as Baked By A Negro bakery products, Midget Man condoms, and Dago Swagg clothing have been granted trademark protection over the years.