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Supreme Court Strikes Down PTO Prohibition Against Derogatory Trademarks

(June 20, 2017) The United States Supreme Court has found that the Patent and Trademark Office (“PTO”) prohibition against registering trademarks that may disparage or bring into contempt or disrepute any persons is unconstitutional.

The PTO denied registration for “The Slants” by a rock group comprised of Asians. The trademark was rejected by the PTO examining attorney because “slants” is a derogatory or offensive term to some Asians. The PTO’s Trademark Trial and Appeal Board agreed.

The group’s leader said he chose The Slants to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity. The group “draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes” and has given its albums titles including “The Yellow Album” and “Slanted Eyes, Slanted Hearts.”

The Supreme Court reiterated that the First Amendment prohibits governmental entities from abridging the freedom of speech. Trademarks are commercial speech and the PTO prohibition violates the First Amendment.

“At issue here is the content of trademarks that are registered by the PTO, an arm of the Federal Government. The Federal Government does not dream up these marks, and it does not edit marks submitted for registration. Except as required by the statute involved here, 15 U.S.C. §1052(a), an examiner may not reject a mark based on the viewpoint that it appears to express. Thus, unless that section is thought to apply, an examiner does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy or whether any such viewpoint is consistent with that expressed by other marks already on the principal register. Instead, if the mark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory,” the court wrote.

The court noted that the statute “is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It apples to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause.”

“Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our fee speech jurisprudence is that we protect the freedom to express ‘the thought that we hate,’” the opinion states. This case likely will resolve the dispute over the trademark for the Washington Redskins football team, which some parties view a derogatory.

Balough Law Offices works with clients to avoid use of marks likely to cause confusion and to obtain PTO registration for their valuable marks.

Matal v. Tam, U.S. Supreme Court No. 15-1293, decided June 19, 2017.