Summary: The Supreme Court struck down a long-standing law barring the registration of trademarks that the USPTO deems disparaging. In the 8-0 opinion, the court held that because trademarks are not government speech, they are protected by the First Amendment. It is unlikely, however, that we will see a significant number of demeaning trademark applications because they do not serve the marketing objectives of most businesses.
Sports teams across the country have recently been the subject of national media scrutiny for their team names and logos. The Cleveland Indians organization, for example, has been criticized for its “Chief Wahoo” logo, consisting of a cartoon-characterized depiction of a Native American. Similarly, the Washington Redskins team has been entrenched in legal battles over the validity of its trademark. The United States Supreme Court, however, ruled Monday that trademarks such as Chief Wahoo are protected as registered trademarks, even if they are considered disparaging to certain people or groups.
Before the court’s ruling Monday, federal trademark law prohibited registration of a trademark that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute[.]” The Lanham Act’s disparagement clause had gained national media attention over the last few years during tribal and Congressional efforts to ban the Washington Redskins from being able to claim federal trademark protection for its name on the grounds that the term “redskin” is offensive and disparaging to Native Americans. In 2014, the United States Patent and Trademark Office (“USPTO”) canceled the Washington Redskin’s trademark after decades of use.
Most recently, the USPTO refused registration of “The Slants,” used by an Asian-American rock band, stating the band’s name “likely referred to people of Asian descent in a disparaging way … [a]nd … many persons of Asian descent would find the term offensive.” The band appealed the refusal, arguing that the ban on disparaging trademarks is unconstitutional on First Amendment grounds. Ultimately, the Federal Circuit held that the disparagement provision was unconstitutional because it regulates the message conveyed by the trademark and allowed the USPTO to deny registrations the government deemed “offensive,” while permitting registrations it deemed appropriate. For example, the government granted registrations to trademarks that referred positively to people of Asian descent, including the marks CELEBRASIANS and ASIAN EFFICIENCY, but denied the mark THE SLANTS because it deemed this reference disparaging. The court called this refusal policy “viewpoint discriminatory on its face.” Therefore, the court vacated the USPTO’s refusal to register THE SLANTS.
The case then made its way to the United States Supreme Court, where the court struck down the disparagement provision as a violation of the Free Speech Clause of the First Amendment. The government argued that once a trademark was registered, it was considered “government speech" and was not subject to the same level of protection. The Supreme Court unanimously disagreed. Through a plurality opinion authored by Justice Alito, the court stated: “It is … farfetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.” The opinion of the court went on to provide: “Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine, for other systems of government registration (such as copyright) could easily be characterized in the same way.”
Does this mean that the floodgates are open to businesses filing disparaging and insensitive trademarks? Dr. Shashi Matta, PhD, does not think so. Dr. Matta, who is the director of MBA programs and associate professor of marketing – clinical at The Ohio State University’s Fisher College of Business, believes that while some niche groups might find it to be useful to target a specific group that shares its beliefs, it generally does not make good business sense to intentionally use a disparaging name. “A mark needs to make sense to your target audience, and if customers are unsatisfied or displeased they will make it known.” Unfortunately, as Dr. Matta noted, there may be some fringe segments to whom disparaging marks would appeal. We could, for example, see use of insensitive marks that may demean specific groups or people as registered trademarks.
While the judgment is viewed by many to be a major First Amendment victory, Justice Alito cautioned that the government still “has an interest in preventing speech expressing ideas that offend.” Thus, while the disparagement clause was struck down, the court suggested that the government could narrowly focus its registration prohibition efforts on hate speech and “drive our trademarks that support invidious discrimination.” For now, though, Chief Wahoo is safe, and the Washington Redskins can focus on winning games instead of court battles.
- Trademark owners should be conscientious about how their marks could be perceived by the public. While the recent decision allows for registration of disparaging marks, owners may not want to register a mark that is highly offensive or derogatory, as this could ultimately impact their bottom line.
- While the door to registration is open, the USPTO still has some authority to close applicants out for potentially “hateful” marks. Debates will likely soon spark surrounding what constitutes a “hateful” mark. Stay tuned.
 In re Tam, 808 F.3d 1321, 1331–32 (Fed. Cir. 2015).