Simon Tam, “I’d be happy to send [Redskins or Daniel Snyder] some legal bills.”
Simon Tam, the front man of a Portland based dance-rock band named “The Slants”, filed suit against the Patent and Trademark Office (PTO) when the PTO refused to trademark their band’s name. Their trademark was rejected under section 2(a) of the Lanham Act, the disparagement clause. The disparagement clause provides that the PTO may prohibit the registration of trademarks that “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”. 15 U.S.C. §1052(a).
The Slants are a dance-rock band made up of four Asian-American men. “Slants” is a racial slur used to refer to those of Asian descent, therefore the PTO found their attempted trademark to be disparaging to people of Asian descent. The PTO used this clause to deny trademark protections to messages that they found to be disparaging to a substantial amount of people. A “substantial amount” of people is both ambiguous and vague, really granting discretion to the ultimate decision makers to decide what is substantial. If the PTO found a trademark offensive, they rejected the application.
In Matal v. Tam, the Supreme Court of the United States found the Lanham Act’s disparagement clause to be unconstitutional, violating the First Amendment’s Free Speech Clause. 137 S. Ct. 1744 (2017). The PTO was using the disparagement clause to deny trademarks they deemed to be offensive messaging, which constitutes viewpoint discrimination. Now, the court made it clear that trademarks are private speech; they are not government speech, not commercial speech, nor are they a part of a government subsidy. The court declared that trademarks deserve protection of Free Speech under the First Amendment.
What was troubling about the PTO’s method of applying the Lanham Act’s disparagement clause is that there was an unclear pattern of trademark application denial. The PTO only seemed to deny certain permits with racial slurs and not others. The trademarks for musical groups like “N.W.A.” (all African-American rap group containing a racial slur within the acronym) and “White Trash Cowboys” (all white rock band) were accepted, but not “The Slants” (all Asian-American dance rock band).
The Slants claims their use of the name is a way to help reclaim the term, take ownership of the stereotype, and drain it of its denigrating force. What about the NFL team of the Redskins? There is no doubt this ruling tremendously helps the Redskins, making their uphill trademark battle now moot. Litigation over the use of “Redskins” has been going on for a quarter of a century, first starting in 1992. The recent litigation was being pursued by Amanda Blackhorse, a Native American woman, who argued the racist slur “Redskins” should have never been a registered trademark from the beginning and advocated for its cancellation. The Redskins team is worth about $3 billion and is owned by a white man named Daniel Snyder.
It’s crucial to ask ourselves exactly how much the circumstances of this litigation played a role in the court’s ultimate decision. If it had been the Redskins case that was in front of the Supreme Court, is it possible that perhaps there would have been a different outcome? The Slants repeatedly expressed how their use of the term was their attempt at reclaiming the insult. It is one thing to allow marginalized groups to decide what is best for themselves, but another thing to let people outside of that referenced group to profit on the use of a racial insult at the cost of other groups discomfort (even if they claim to be “honoring” them). Simon Tam was clear to assure everyone that The Slants have not formed an alliance with the Redskins; they are not associated in any way with the Redskins nor do the Slants support the “racist NFL football team” claiming “it is possible to support free speech while opposing hate speech.”
When considering The Slants, it is easy to see how the court got the right result. An opposite opinion could have had damaging effects on the future of trademarks. The disparagement clause gave the PTO the ability to restrict messaging based on its ability to disparage a substantial amount of people, an already vague standard. This could have quickly spread into government censor of other areas; the next on the list probably being copyright. What about the many other trademarks that were previously denied under this law? Will there now be a resurgence of attempts to register offensive trademarks?
This presents an extension of a broader debate on the usage of racial epithets. Who should be allowed to trademark a racial epithet and benefit from its trademark protections? Does it matter how the members of the offended group actually feel? Is it okay for anyone to trademark an insult disparaging to Asian-Americans, or just Asian-Americans with hopes to reclaim the epithet? I guess the answer to those questions for now, is that no one should get a trademark application rejected exclusively because of its potentially offensive message. Simon Tam outlines three distinct differences in their cases; could these differences translate into legally sufficient differences to prompt a narrower future change in trademark law? Will “hate speech” be trademark-able forever or will the social climate and advocacy work make a change? The opinion came out fairly recently, dated June 19, 2017. It will be interesting to see the legislature’s reaction and how advocacy groups will maneuver attacking this same issue in future cases. For now, it is only clear that all trademarks are private speech, which is protected from being censored by the government under the First Amendment.
Sara Bagley is a J.D. candidate, 2019, at NYU School of Law.