Trademark Disparagement? The Slants, The Redskins and the Supreme Court

By: Meghan Nugent

Acceptable Trademark Disparagement… or Disparagement at all?

People try to trademark all types of names, brands and slogans. The U.S. government, however, acts as the gatekeeper applying trademark law to decide whether or not those names or brands are worthy of protection or if they constitute trademark disparagement. One of the most newsworthy parts of trademark law is the “disparagement clause.” This clause allows the government to determine whether or not a proposed trademark is offensive.

Under U.S. trademark law, aka the Lanham Act, trademarks that disparage “… or bring … into contempt, or disrepute” any “persons, living or dead” are not allowed. In other words, any trademark seen as offensive by the U.S. Patent and Trademark Office (USPTO) will be rejected. The provision has halted the registration of many offensive trademarks over the years. (If you want to see some examples, run a simple search of the USPTO trademark database and you will see some of the ideas people have come up with!)

However, this June, the U.S. Supreme Court ruled that the disparagement clause within the Lanham Act violates the First Amendment. Read more here about how Three Early Supreme Court Decisions Shaped the U.S. Economy.

The case, Matal vs Tam, involved the Asian-American rock band The Slants, who filed an application for a trademark to register their band name with the USPTO. The office rejected the band’s application. Relying on the disparagement clause, the USPTO found the name “The Slants” was offensive toward Asian-Americans.

The Slants Fight the Disparagement Clause
The Slants said they wanted to “reclaim” a slur used against those of Asian descent. The band decided to appeal the decision. The first stop was the Trademark Trial and Appeals Board, the body within the USPTO responsible for hearing and deciding certain cases involving trademark applications and registered trademarks.

The board agreed with the trademark office. Undeterred, The Slants appealed the decision to federal court, where the band argued the disparagement clause violated the First Amendment’s guarantee of freedom of speech. The court agreed with the band upon those grounds. Standing by their original assessment and hoping to avoid being compelled to register the band’s name as a trademark, the USPTO then requested the Supreme Court hear the case. For more information about protecting your own unique name or brand, check out the Financial Poise Webinar: Choosing, Building and Protecting Your Brand.