Redskins, Slants & Free Speech Considerations For Offensive Trademarks
Apr. 26, 2016 (Mimesis Law) — On Monday, the Washington Redskins petitioned the Supreme Court of the United States (SCOTUS) to grant review of the cancellation of the registered trademark “Washington Redskins” by the US Patent and Trademark Office if it takes on a similar case involving a band called “The Slants”. Pro-Football Inc, the parent company of the Redskins, filed a writ of certiorari for the review of the case where the US Patent and Trademark Office (USPTO) dismissed the mark for on the grounds that it is offensive to Native Americans.
Last week, the Department of Justice requested that the Supreme Court review a federal appeals court’s holding that the USPTO violated the free speech rights of Oregon-based band “The Slants” by denying its application to register their band name on the grounds that it is disparaging to Asian Americans. The court held that the law the USPTO relied upon in its denial of the trademark is an unconstitutional violation of the First Amendment.
The law in question is Section 2(a) of the Lanham Act which states that a trademark shall not be granted if it:
“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 Slants – an all Asian-American male band – maintain that they chose the name to challenge stereotypes and reclaim the derogatory term. The issue in the case is whether the denial of a trademark based on the subjective considerations of a Trademark Examiner that a mark is immoral/deceptive/disparaging etc is contrary to the free speech provisions in the First Amendment. Basically, should TM Examiners be able to make arbitrary decisions as to whether a trademark is offensive or not.
Here’s where the Redskins come in – their trademark was revoked in 2015 after over 50 years of registration when a federal court ruled that their name was disparaging to Native Americans. Pro-Football Inc noted in its petition to the SCOTUS that their decades-long registration has only recently become disparaging, claiming that in at the time of registration in the 60s, “Redskins” was not necessarily considered offensive; thereby showcasing the arbitrary and potentially free speech-encumbering decisions that the USPTO undertakes. Moreover, they state that the denial of trademark after over 50 years violates their due process.
The USPTO’s lawyers assert that denials of trademarks on this basis do not curb free speech as the term can still be used to promote and advertize products/services. The crucial difference is that without trademark protection, it is not possible to prevent others from using the term for commercial or other purposes.
For the Redskins, it is of much more import to retain their well-known trademark as the commercial viability of their brand has already been established in sales and merchandise. For The Slants and their crap rock music genre, on the other hand, it appears they are taking this case on in a more symbolic fashion as it is not immediately obvious that they would suffer any economic detriment on that front.
SCOTUS has not indicated yet whether it will grant review for either or both cases and until then the IP community must wait with bated breath to see if a pivotal piece of trademark legislation will be ruled unconstitutional.