The Oregon band “The Slants” has been trying to obtain a federal trademark registration for their name since 2011. The United States Patent and Trademark Office (PTO) has repeatedly denied that registration, finding the name disparaging to persons of Asian descent. By statute, the PTO refuses trademark registrations 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 …
35 U.S.C. § 1052(a) (emphasis added)
The members of the dance rock band are of Asian descent and they picked “Slants” as their band name to re-appropriate that term. To the PTO, however, the goal or purpose of the band in using the term is unimportant. In its rejection of the Slants’ trademark application, the PTO argued that statements by the band about re-appropriation only prove that the term is indeed a slur and that the disparagement clause applies.
If this restriction on trademark registrations sounds to you like it is in conflict with the First Amendment’s prohibition against laws that “abridge the freedom of speech,” you are not alone; the Federal Circuit agrees. In a 9-3 en banc decision issued in December 2015, the Federal Circuit held that the exclusion of “disparaging” marks violates the First Amendment. The PTO sought review of this decision and the Supreme Court will now consider whether the disparagement provision of Section 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.
This case has implications that extend well beyond the music scene. The Washington Redskins, for one, are watching this case carefully. The NFL team has been litigating the right to register the name Redskins, publicly and in the courts, for over 20 years. The first challenge came in 1992, when a group of Native Americans sought cancellation of the trademark registration, asserting that the mark is offensive and disparaging. The mark was initially canceled, but then reinstated on appeal. More recently, in 2014, another group of plaintiffs convinced the PTO to cancel the Redskins trademark registration. That decision has been appealed to the United States Court of Appeal for the Fourth Circuit. The Redskins also sought to have the Supreme Court bypass the Fourth Circuit and consider the Redskins case along with the Slants case, but it declined to do so.
The Slants case will be heard by the Supreme Court sometime this term, which runs from October 2016 to June 2017.