THAT’S OFFENSIVE! ® Trademarking Disparaging Words

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To most businesses, it would make no sense to trademark an offensive slogan. After all, why would you narrow your customer base by intentionally insulting or disparaging a subset of consumers? Of course, in today’s polarized climate, some businesses now capitalize on societal rifts and target one side of any issue with their products, which often aim to ridicule and belittle the other side.

To function as a trademark, a slogan must identify a source. Slapping “I Hate Republicans” on a coffee mug or “I Hate Democrats” on a T-shirt would not identify your business as the source of the products, but only be “merely ornamental.” Of course, you could put either of those phrases on hang tags, labels, and packaging in a manner that would be trademark use. Up until earlier this year, had you done just that, the U.S. Patent and Trademark Office would have not permitted you to register the mark.

For years, the Lanham Act prohibited the registration of any trademark that disparaged or brought into contempt or disrepute any persons, living or dead. In a nutshell, if the USPTO found your mark to be offensive, or potentially offensive, to any individual or group, it would deny your application to register that mark. The initial applications of the Washington Redskins made it through the registration process years ago; however, the Washington football team has been fighting a long battle to stop those marks from now being cancelled under this provision.

While trademark registration is not necessary in order to use, claim rights in, and enforce a trademark, it does bestow valuable legal benefits. Registration provides others with constructive notice of your rights in the mark and gives you a presumably exclusive right to use the mark throughout the U.S. Owners of registered trademarks may also stop the importation of infringing goods.

So, should the government be permitted to deny you a trademark registration if it deems your mark to be disparaging or offensive to any person? Many would argue that the government should not have to “endorse” hatred or bigotry by providing anyone with a federal registration of an offensive term. Others may argue that making the government the arbiter of what is offensive is a slippery slope and violates freedom of speech guarantees provided under the First Amendment.

The Supreme Court recently settled the issue.

In 2011, Simon Tam sought to register the name of his band “The Slants.” The USPTO refused registration, finding “slants” to be a derogatory term for persons of Asian descent. Tam, himself an Asian-American (as are all members of the band), stated that the band selected the name to help “reclaim” the term and “drain it of its denigrating force.” Tam would end up appealing this refusal in a case that bounced its way through the USPTO, appellate courts, and all the way up to the Supreme Court.

Tam argued that the provision of the Lanham Act allowing the government to deem a mark “offensive” and thus refuse registration violated his First Amendment rights. While admitting that the determination of whether a mark is disparaging is “highly subjective,” the government argued that the prohibition against registering offensive marks passed constitutional muster.

All eight justices (Gorsuch did not take part) agreed that the disparagement clause of the Lanham Act violates the First Amendment. Justice Alito summed up the opinion as follows:

“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 free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”

Simon Tam’s stated intent of draining “slants” of its denigrating force is laudable. The result of Tam’s legal battle, however, means that anyone using a hateful, offensive term in commerce as a trademark may now register that mark regardless of their intent in selecting and using the mark. While it makes little sense for most businesses to adopt offensive trademarks, the registration process is now open to those that do.

Barnes & Thornburg LLP is a large, full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business.

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