IP Law Bulletin

“The Band Who Must Not Be Named”

A band called The Slants[1] formed in Portland, Oregon, in 2006. In the eleven years since, they have released a half-dozen albums; their most recent EP is called “The Band Who Must Not Be Named.” All of the group’s members are Asian-American, and their online biography notes that “[i]n addition to the music, the band is actively involved with helping marginalized communities, leading discussions on race and identity, and raising awareness of social justice issues.”

The Slants chose their name, in part, to “reclaim” the term and to negate its pejorative potency.  When they applied to register “THE SLANTS” as a trademark, the application was rejected as disparaging to a group. The rejection was based on 15 U.S.C. § 1052(a) (“§ 2(a)”), the Lanham Act’s bar to trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” The band’s appeal made its way to the Federal Circuit, and that court struck down § 2(a) as impermissible viewpoint-based discrimination.

Please see our prior articles on the subject for a more in-depth review of this case’s procedural background; you can find them here and here.

The Supreme Court’s Analysis

The Supreme Court first considered and rejected Tam’s position that § 2(a)’s reference to “persons” meant that it did not apply to marks that disparage “non-juristic entities such as racial and ethnic groups.” Tam had not raised this argument below, but the Court considered it because if he was right, it could dispose of the case without confronting the constitutional dilemma. But the Court was unpersuaded, and it held that “persons” applied to the members of a racial or ethnic group.

The Court next explained that § 2(a) violated the Free Speech Clause of the First Amendment. The government contended that trademarks are government speech and that the First Amendment does not apply to them. That is, when the U.S. Patent and Trademark Office (“PTO”) registers a trademark, that mark receives the imprimatur of the U.S. Government and is a manifestation of its speech.

The Court rejected this argument, explaining that the PTO does not create or edit marks, and—except as provided in § 2(a)—a mark cannot be rejected based on its apparent viewpoint. Thus, the Court explained, “[i]f the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.” And importantly, PTO registration does not suggest government support of a mark’s apparent position. Twitter users might recognize an analogue in “retweets do not = endorsements.”

Further, the Court’s line of government speech cases did not apply here. Those cases found government speech in the form of: government creation and editing of ads for beef products; a Ten Commandments monument in a city park; and messages on specialty license plates in Texas. The Court explained that trademarks are different in a host of ways, including the government’s lack of control over marks’ content and the tenuous connection between trademarks and the government “in the public mind.”

For these reasons, the Court affirmed the Federal Circuit’s decision to strike down § 2(a).

REDSKINS Case

The Court’s decision undercuts a Native American group’s longstanding efforts to cancel Washington Redskins trademarks. The PTO’s Trademark Trial and Appeal Board (“TTAB”) cancelled six Redskins registrations on the basis that they disparaged a substantial component of Native Americans. In other words, the Redskins tentatively lost their trademark registrations based upon the legal provision just struck down by the Supreme Court. The team appealed the decision to the U.S. District Court for the Northern District of Virginia, which upheld the TTAB’s decision. The team in turn appealed the decision to the Court of Appeals for the Fourth Circuit, where consideration was suspended at the team’s request pending the Matal v. Tam Supreme Court decision.  The cancelled REDSKINS words and logo marks include a registration that issued in 1967. Thus, the team characterizes the cancellation of its registration as tantamount to an uncompensated taking of property, in addition to an improper speech restraint. It appears that team will be able to maintain its trademark registrations, after all.

Broader Implications

The Matal v. Tam decision likely will have implications beyond the Lanham Act “disparaging mark” prohibition clause that was struck down.  Justice Kennedy, in his concurring opinion joined by Justices Ginsburg, Sotomayor and Kagan, observed that the Court’s decision leaves certain Lanham Act registration prohibitions intact, specifically citing confusing or misleading mark prohibitions. Not at issue in the case, and beyond the scope of the Court’s primary and concurring opinions, however, were § 2(a) registration prohibitions concerning “scandalous” and “immoral” marks. Over the years the TTAB has regularly affirmed refusals of “scandalous” marks, ranging from a raised middle finger to A-HOLE PATROL to others more overtly “offensive”—we will leave those to the reader’s imagination. This result well might embolden others to similarly challenge § 2(a) registration prohibitions on “scandalous” and “immoral” marks on a constitutional basis. If Lanham Act § 2(a) is not first re-written, it is likely that we will see a “scandalous mark” test case percolate to the Federal Court of Appeals stage. In view of the Court’s Matal v. Tam ruling, the free speech interests of trademark applicants, even the more offensive ones, are likely to come out on top.

[1] Simon Tam is the band’s lead singer; he sought the mark and is named in the case.