SCOTUS Decision Reaffirms Free Speech in Disparaging Trademarks

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SCOTUS Decision Reaffirms Free Speech in Disparaging Trademarks

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Ahmed M.T. Riaz, Thomas P. White

The U.S. Supreme Court’s Lee v. Tam decision struck down a provision of the federal trademark law – referred to as the “disparagement clause” – that permits the U.S. Patent and Trademark Office (USPTO) to deny registration of any trademark that it decides is disparaging to a substantial number of people. The court did so on the basis of the First Amendment’s free speech clause, which prohibits the government from restricting speech based on the viewpoint or ideas expressed in the speech.

This case involved the trademark “The Slants,” which an Asian American band member sought to register for use in connection with musical performances. The USPTO determined the mark was disparaging to Asian Americans and refused to register it. Ironically, the trademark applicant said he chose the name as a way of protesting cultural stereotypes – by taking ownership of a derogatory term and using it to challenge the stereotypes that the term represents, just as the term “queer” has been reappropriated by the LGBT community as a term of honor.

The Supreme Court rejected various arguments put forward by the government in an effort to avoid the heightened First Amendment scrutiny typically applicable to laws regulating free speech. In particular, the Supreme Court determined that “trademarks are private, not government speech;” and that registration of trademarks is different from government subsidies in the form of cash grants or their equivalent. Thus, the court focused on the fact that the disparagement clause involves viewpoint-based discrimination, because it allows the USPTO to decide whether or not brands are offensive.

The court’s decision will open the door to efforts to register trademarks that – unlike “The Slants” – are intended to disparage certain people or groups. But the decision reaffirms the protection afforded to free speech in the marketplace, regardless of whether the speech is insulting or even hateful. The court’s decision also likely will put an end to the efforts to cancel the federal registrations of “Redskins” trademarks, owned by the National Football League’s Washington D.C. franchise, on the basis that the trademark is disparaging to Native Americans.