v31#2 Cases of Note — Disparaging Trademarks Are Free Speech

by | May 23, 2019 | 0 comments

Column Editor:  Bruce Strauch  (The Citadel, Emeritus)  


“Chinatown Dance Rock” band “The Slants” applied for federal trademark protection for their name.  All were Asian-Americans from Portland. They claimed to feel the derogatory term could be “reclaimed” and drained of its denigrating force.

And they must have gotten that language from a college professor.  Or perhaps it’s learned in grade school in Portlandia.

At any rate, they have a niche popularity with the subculture of Otaku, which is Japanese for “geek” or “nerd” and particularly refers to manga obsessives.

Their music is described as synth-pop similar to “Chvrches” and “I Am X.”  Their influences are ’80’s bands like “Duran Duran,” “Depeche Mode,” and “The Cure.”

The term “slant” refers to the epicanthic fold or skin fold of the upper eyelid, common but not universal among Asians.  And was once a common slur.

And our gang of rockers has albums named “The Yellow Album” and “Slanted Eyes, Slanted Hearts.”

The Patent and Trademark Office (PTO) denied the application based on 15 U.S.C. §1052(a).  It prohibits trademarks that may “disparage … or bring … into contempt or disrepute” any “persons, living or dead.”

Well, that’s pretty obviously a loser if you want to stop reading right here.  Can I have Little Bighorn Beer with George Custer on it stuck full of arrows?

Trademark protection is designed for distinctive marks — words, names, symbols etc. — that distinguish one artisan’s goods from another’s.  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 212 (2000).

This helps consumers find desired products without confusion and protects the vendor’s good will.  Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985).

Trademark protection is ancient in origin and came here with the Common Law.  For most of the 19th century, it was the province of the states. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780-782 (1992).

Congress decided to wade in in 1870, and the Lanham Act of 1946 provided for federal registration.  Lanham bars marks that are “merely descriptive or deceptively misdescriptive” of goods.  §1052(e)(1).

More to the point, it has a “disparagement clause” that bars marks “which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” §1052(a).  The PTO asks whether the mark may be disparaging to a substantial composite — though not necessarily a majority — of the referenced group.

Who dreamed that up?  Think 1946. The year before saw the birth of the United Nations, a dream of world government since Woodrow Wilson.  Franklin Roosevelt conceived of the body during WWII, began describing the Allied Powers as the “United Nations.”  He was determined to join the world together in a love-fest of happy-clappy democracies. Modeled on us, of course.

I’m totally guessing.  And I sure can’t be bothered to delve into the Congressional record on the subject.

But I bet a lot of it had to do with not offending the symbols of foreign nations.

Strauch’s nonsense speculations aside …

  • 1052(a) has been around, used inconsistently.  And the PTO has made it clear it doesn’t care if the applicant is a member of the disparaged group or has good intentions.

Yet the PTO has admitted that “disparaging” is “highly subjective and, thus, general rules are difficult to postulate.”  Harjo v. Pro-Football Inc., 50 USPQ 2d 1705, 1737 (TTAB 1999).

And that was before the Internet outrage mobs could get in a frenzy over a “Men Working” sign.

But incredibly, the PTO didn’t survey a whole bunch of Asians to find a substantial composite.  They based their ruling upon a quote from Urbandictionary.com and — wait for it — a picture of Miley Cyrus pulling her eyes back into a slanting shape while seated next to an Asian.

Tam was quoted in the media as saying Asians thought it all quite funny;  only white people balked at it.

Well, the dogged Tam contested the denial before the examining attorney, the PTO’s Trademark Trial and Appeal Board.  Then he went to federal court where they chose to sit en banc to find the disparagement clause violated the First Amendment’s Free Speech Clause and was unconstitutionally vague.

No kidding.

PTO filed a petition for cert which was granted.

Supreme Court

Before that august body, the PTO argued trademarks were government speech, not private speech.  And the Free Speech Clause doesn’t regulate gov speak. Pleasant Grove City v. Summum, 555 U.S. 460, 467 (2009).

Government can’t regulate speech in ways that favor a viewpoint at the expense of others.  But gov has its own viewpoints and couldn’t function if it self-applied that rule.

Trademarks are created by the owner, maintained by same, and removed from the register if cancelled by the owner.  It is far-fetched to call it government speech. Government would be endorsing a vast array of commercial products and services, many of them contradictory.  We have registrations for both “Abolish Abortion” and “I Stand With Planned Parenthood.”

What kind of govt. drivel would be put forward by “make.believe” (Sony), “Think different” (Apple), “Just Do It (Nike)?

Anyhow, registration does not mean approval.  See In re Old Glory Condom Corp., 26 USPQ 2d 1216, 1220, n.3 (TTAB 1993).

That’s kind of cute, even without reading the case.

“If there’s a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”  Texas v. Johnson, 491 U.S. 397, 414 (1989);  Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 55-56 (1988).

Parks and monuments convey government messages, but not trademarks.  And if you pushed this idea too far, a copyright would make a book into government speech.

And doubtless you’re aware of the Washington Redskins brou-ha-ha.  They had their trademark cancelled, but the Tam case obliged the appeals court to vacate the decision.  So don’t imagine you can sell pirated Redskins gear.  


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