October 2, 2017
The Lanham Act, which was enacted on July 5, 1946, is the United States’ primary federal trademark statute. The Lanham Act provides how trademarks can be registered with the United States Patent and Trademark Office (PTO) for trademark protection, and also provides the grounds on which the PTO can refuse to register an applicant’s trademark. The Lanham Act provides eight distinct grounds which allow the PTO to refuse to register an applicant’s trademark. One of the grounds on which the PTO can base its decision to refuse registration of an applicant’s trademark is this: the applicant’s trademark disparages or falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. In plain English, the PTO can refuse to register a trademark if the trademark is offensive.
On June 19, 2017 a decision by the United States Supreme Court removed offensiveness as grounds for refusing trademark registration. The case, Matal v. Tam, involved an Asian-American rock band, called The Slants , who had attempted to register its band name as a trademark with the PTO. The PTO refused to register the band’s trademark because the PTO believed the band’s trademark was offensive to Asian-Americans. The PTO reasoned that the word ‘slant’ is often used to mock the shape of Asian-Americans’ eyes. The band sued the PTO to force the PTO to register the band’s name, and argued that offensiveness cannot be a ground for refusing trademark registration because it violates the First Amendment of the United States Constitution. Specifically, the band argued that such a refusal violates the protections of free speech, even offensive speech, provided by the First Amendment. The Supreme Court agreed. In the opinion, Justice Samuel Alito Jr. wrote: “The First Amendment protects offensive speech. 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.”
How does this decision affect current trademark holders, and what does this decision mean for future trademark registration applicants? For current trademark holders this decision means that third parties cannot challenge the validity of an already-registered trademark on the basis that the trademark is in some way offensive. An example of this is the NFL team, the Washington Redskins; for the past few years many people have petitioned the PTO to cancel the team’s trademark and logo because the word ‘Redskins’ and the logo, which depicts a Native American, are offensive to Native Americans. Offensiveness is no longer a ground for trademark registration renewal, so the Washington Redskins will get to keep their team name and logo (regardless of how you feel about that). For future trademark registration applicants, this decision means that it does not matter how offensive a trademark is or who the trademark offends: the PTO cannot refuse to register a trademark that it deems to be offensive.
Author: Gregg Dawson, Attorney
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