In a trademark case that could have far-reaching effects, particularly for the NFL’s Washington Redskins, the US Supreme Court decided to hear the Asian-American band, The Slants’, trademark case after the band was initially denied a trademark registration on the grounds that the mark was “disparaging”. Last year, the U.S. Court of Appeals for the Federal Circuit reversed the USPTO’s decision and sided with The Slants’ free speech argument. With uncertainty surrounding the issue, the Supreme Court elected to hear the case and will now give guidance on what type of filtering power the UPSTO can have over marks based on mark offensiveness.
Federal law covering trademarks allows for the USPTO to reject marks “which consist of or comprise 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 government argues that it must have the right to police trademark applications so it can prevent disparaging and immoral marks from receiving the additional benefits that come with government sanctioned trademark registration, benefits like presumption of validity and the ability to sue in federal court. It also points out that the band, or anyone else for that matter, can still exercise their free speech rights and call themselves whatever they want, but the government shouldn’t have to certify immoral or disparaging remarks with a trademark registration.
The Slants and the Federal Circuit that sided with the them last year, say that the First Amendment right to free-speech trumps the government’s interest in policing these marks. The Slants argue that by using the name they are taking back a term that once was directed as an insult and now reclaiming it as a badge of pride. They further contend that the government should not be the judge of what is and is not scandalous or immoral and that these are subjective standards. What is scandalous for one, may not be scandalous for another.
This is very significant case not only for trademark law but also for Constitutional law and free speech. This could be a watershed case and is an important case to watch. The Supreme Court will have to determine whether the scope whether the scope of the First Amendment protects against content based speech discrimination in the context of trademarks. It will be interesting if this will be a unanimous of split decision. It will also be interesting to see the method used to make the determination – if they attempt to do a balancing of interests approach. Is denying a trademark registration an intrusion on someone’s right to free speech? Is it important for government to have a say in what is scandalous or immoral? The Washington Redskins will certainly be watching this case as its extremely valuable trademark registration likely hangs in the balance.