Business Monday

My View: Trademarks are about to get scandalous, immoral and disparaging

Jorge Espinosa is managing partner with the Miami intellectual property law firm of Espinosa Trueba Martinez P.L.
Jorge Espinosa is managing partner with the Miami intellectual property law firm of Espinosa Trueba Martinez P.L.

STOP IMMIGRANTS TO MIAMI, REDSKINS, HAVE YOU HEARD THAT SATAN IS A REPUBLICAN? DEMOCRATS SHOULDN’T BREED, and many other words and phrases that many would find offensive have all been refused registration as trademarks by the United States Patent and Trademark Office (USPTO) on the basis that they are scandalous, immoral or disparaging.

This prohibition may have ended, however, because the United States Court for the Federal Circuit has held the government’s conduct in barring these registrations is unconstitutional.

Section 2(a) of the Lanham Act that governs trademark registration in the United States bars the USPTO from registering scandalous, immoral, or disparaging marks. For most of the 20th century, few marks were refused registration on such grounds. However, with the growth of cultural sensitivity and, some would say, politically correct speech in the past several decades, the provision has been used with increasing frequency to cancel marks or refuse registration.

This all began to unravel in 2011 when musician Simon Shiao Tam tried to register the name of his Asian American dance-rock band, THE SLANTS, for entertainment services. The trademark examiner refused registration pursuant to section 2(a) finding the name likely “disparaging to persons of Asian descent,” a substantial number of whom would find the term offensive.

Tam appealed the examiner’s decision to the Trademark Trial and Appeal Board (TTAB). The TTAB affirmed the decision restating that the mark is seen as offensive by persons of Asian descent and that individuals and groups in the Asian community objected to Tam’s use of the word. The TTAB therefore rendered the word SLANT incapable of registration under section 2(a).

Tam appealed the TTAB’s decision to the United States District Court for the Federal Circuit, the court empowered to review administrative rulings by the USPTO. Tam argued that the mark was not disparaging and that the prohibition in section 2(a) was unconstitutional. In its first review of the matter, the Federal Circuit affirmed the decision of the TTAB finding that the mark SLANT is disparaging. Citing the case of In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981), held that since refusal to register a mark does not bar a person from using a mark unregistered, such a refusal does not implicate the First Amendment.

After rehearing the case, on Dec. 22, the en banc panel issued a 10-to-2 decision that the prohibition in Section 2(a) against scandalous, immoral, or disparaging marks was unconstitutional. The court reasoned that the law improperly let the government discourage speech based on content. This means STOP THE ISLAMISATION OF AMERICA is prohibited while THINK ISLAM is not. According to the court, this allows the government to improperly discourage speech that it does not agree with.

This decision is likely to lead to a wave of federal registrations for traditionally taboo trademarks. Trademarks with provocative content, obscene references, hateful slurs or racist interpretation are likely to be registered.

While a business still has to consider the impact of its trademark in the marketplace and on its customers, this is likely to be welcomed by niche businesses that cater to specific groups amongst whom words that the general population finds offensive are welcomed. So, for example, a racist organization can now register a trademark making a derogatory racial term and can benefit from the protections of registration. Hostile community and local government reaction is another consideration for someone considering such a trademark.

It is still possible that the Supreme Court could reinstate the law if it ever goes before the high court for review. However, until such time as the Supreme Court reviews the decision, if it does, trademark registrations are likely to include more controversial content for the foreseeable future.

Jorge Espinosa is managing partner with the Miami intellectual property law firm of Espinosa Trueba Martinez P.L. He may be reached at: jespinosa@etlaw.com.

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