Offensive Trademarks and the First Amendment

 

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While the Washington Redskins trademark is offensive to Native Americans, the courts may not be able to do anything about it. The First Amendment protects free speech, even when it’s hurtful.

Disparaging Trademarks

If the Redskins are able to keep their trademark, they will have a band named “The Slants” to thank. The band recently won a key court victory in seeking to register a federal trademark for its name.

According to Simon Shiao Tam, he named his band “The Slants” to make a statement about racial and cultural issues in the United States and “take ownership” of Asian stereotypes.

However, the U.S. Patent and Trademark Office (USPTO) rejected registration of the mark on the grounds that it is offensive to persons of Asian descent. Under Section 2(a) of the Lanham Act, trademarks “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” are prohibited from federal registration.

Tam appealed the denial, arguing that Section 2(a) of the Lanham Act is unconstitutional. While a three-judge panel of the U.S. Court of Appeals for the Federal Circuit sided with the USPTO, the full court disagreed. In December, it held that the disparagement provision of Section 2(a) is unconstitutional under the First Amendment.

First Amendment Protections

“It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys,” Judge Kimberly A. Moore explained. In reaching its decision, the Federal Circuit concluded that the statute’s restriction on speech could not survive strict scrutiny analysis, which is applied to viewpoint-based restrictions on speech.

As further explained in the opinion:

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional.

The Future of the Redskins’ Trademark

In 2014, the USPTO cancelled six trademarks held by the Washington Redskins football franchise. The ruling was the result of more than a decade of litigation over whether the trademarks disparage American Indians.

In its decision to cancel the Redskin trademark, the USPTO stated: “Petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term Redskins to be disparaging in connection with respondent’s services [the football team] during the relevant time frame of 1967-1990.” However, according to the Federal Circuit’s recent decision, the federal government can’t refuse registration or use of a trademark simply because some people may find it disparaging or offensive. As set forth above, this the very reason the USPTO cited when canceling the Washington Redskins trademark.

The Fourth Circuit Court of Appeals, which is considering the Redskin’s trademark dispute, isn’t bound by the Federal Circuit’s ruling in the Slants case, so it will be interesting to see how much weight the appeals court gives it. Practically speaking, any court victory the Redskins secure is largely symbolic. The Redskins can continue to use the trademark even though the federal registration has been canceled. They just do not enjoy the benefits of federal trademark protection, such as the ability to pursue trademark infringement cases in federal court. At this point, the team appears to be pursuing re-registration of the trademark out of principle and to bring an end to the controversy surrounding it. The fight may very well end up before the U.S. Supreme Court.

Donald Scarinci is a managing partner at Lyndhurst, N.J. based law firm Scarinci Hollenbeck.  He is also the editor of the Constitutional Law Reporter and Government and Law blogs.

Offensive Trademarks and the First Amendment