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Bold Decision! THE SLANTS: “Free” to Disparage

June 28, 2017

THE SLANTS are an Asian-American dance-rock band whose controversial band name became the subject to the recent Supreme Court decision (June 19, 2017) on trademark law and the First Amendment. A trademark is a word, phrase, symbol and/or design that identifies and distinguishes the source of the goods of one party from those of others. The term “slant” is a derogatory term used to refer to people of Asian descent in reference to the shape of their eyes. All four members of the band are of Asian-Pacific Islander descent and are well known for their involvement in the Asian-American community. The lead singer of THE SLANTS, Simon Tam, states that the band chose their moniker to “reclaim” the term and take away the force it has as a derogatory term for Asians.
However, when Tam filed an application to have the band name registered with the Patent and Trademark Office (PTO), his application was denied under the Lanham Act’s disparagement clause. The disparagement clause states that no mark will be allotted trademark protection if it may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U.S.C. § 1052(a). When the PTO’s administrative appeal process produced identical results, Tam took his case to federal court. In a hearing en banc, the Federal Circuit found the Lanham Act’s disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause. Upon appeal by the government, the Supreme Court later affirmed the decision of the Federal Circuit.

Why the Government Got it WRONG
The government main argument against the contention that the disparagement clause violated the First Amendment’s Free Speech Clause was that trademarks are a form of government speech. The government neither dreams up these arrays of trademarks, nor do they [PTO] pay money to parties seeking registration of a mark. It is the party seeking registration of a mark that pay $225-400 per class to file a federal trademark application, $125 per class to file an affidavit of use, and $425 per class every 10 years to keep that protection. While registered trademarks receive valuable non-monetary benefits from government resources, nearly all government services use some type of government funds (i.e.: police, firefighters, public highways and parks). The government had also created a limited public forum for private speech allowing for some content and speaker-based restrictions. Alternatively, even if it did, viewpoint discrimination is forbidden. “[P]ublic expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Street v. New York, 394 U. S. 576, 592 (1969).
Central Hudson Gas & Elect. v. Public Serv. Comm’n of N. Y., 447 U. S. 557 (1980) brings upon the argument that trademarks are a type of commercial speech subject to the relaxed scrutiny in, yet also fails because the disparagement clause cannot withstand Central Hudson. The aforementioned case states that a restriction of speech must serve “a substantial interest” and be “narrowly drawn.” Id., at 564-65. Two interests were mentioned: (1) to prevent speech expressing ideas that offend, and (2) to protect the orderly flow of commerce from disruption caused by trademarks that support invidious discrimination. The first interest strikes at the heart of the First Amendment and therefore cannot stand, and the second does not withstand Central Hudson because while it may be a “substantial interest,” the disparagement clause is not “narrowly drawn.” This can be seen by the direct wording of the clause, which bars registration of any trademark that disparages “any person, group, or institution.”
The whole point of the First Amendment’s Free Speech Clause is to allow individuals to express themselves without government interference or regulation. While the government may not agree with all speech (especially hate speech), our basic civil liberties ensure that our freedom of expression is guaranteed. These civil liberties are the foundation of our vibrant democracy, and without them we would not be “The Land of the Free and Home of the Brave-” enough to disparage.

Benefits of Federally Registered Marks
• Nationwide protection
• The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
• The ability to recover attorney’s fees in infringement actions;
• The incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;
• The right to use the ® symbol in connection with the mark, which may deter potential infringers;
• Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
• The right to sue for infringement in federal courts; and
• The ability to have the customs service block the importation of goods bearing an infringing mark;
• Easier to prove an allegation of trademark infringement through prima facie evidence of trademark ownership and use.

Important to Note
A valid trademark may still be used in commerce, even without a federal registration. This means that although THE SLANTS had originally been denied federal trademark protection, they were not prohibited from continuing to use the moniker. The rock band would have continued to own common-law rights in THE SLANTS, which can be fully enforced in state and federal courts against third-party infringers. This is because common law rights to a mark attach as soon as you begin using the mark and are not governed by statute.
The downside to only have common law protection is that there may be a geographic limitation to the protection if the mark is only used in certain geographic area (i.e.: only protected in NY). However, it the mark is used nation-wide, then that common law protection is also nation-wide. The lack of registration also makes it hard to conduct an adequate trademark clearance search to prevent infringement. Ultimately, the protection afforded to common law trademarks pale in comparison to the rights afforded to federally registered marks.

Author: Marissa Lim, Intern

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