Trademark law, is the body of law that protects commercial names and symbols. It has a dual purpose: (1) it protects brands in commerce from getting pirated by copycat competitors, and (2) it protects consumers, who can be fairly sure that they’re buying what they think they’re buying.
Trademark is for the most part a matter of federal law (states offer trademark protections, too, but given people’s mobility and especially the internet, state trademark laws aren’t used much). Back in the 1940s Congress passed the Lanham Act, which was the framework for modern-day trademark laws. The Lanham Act hasn’t changed much in the last 70 years. But last month the Supreme Court decided a small but significant chunk of it was unconstitutional.
The case ends the 7-year struggle by the Oregon rock band The Slants to get a federal trademark for their name. The band’s original application was rejected by the United States Patent and Trademark Office, which decided that the name violated the part of the Lanham Act that says registrations would not be granted to any trademarks that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols,or bring them into contempt, or disrepute.” The Supreme Court unanimously ruled that this part of the law violated the free speech portion of the First Amendment, reminding us that the First Amendment protects all speech, whether it’s nice or naughty or vile or offensive.
Note that this part of the law really has nothing to do with the dual purposes of trademark law. It has to do with “decency.” The problems with assigning the USPTO the job of guardian of the public weal instead of steward of commerce are kind of obvious, right? Public mores change. What was objectionable in the 1940s might be mainstream now. What’s objectionable to you might be just fine with me. And the low-level civil servant examiners who initially decide these things at the USPTO are notoriously capricious.
The law has had an interesting history. It’s been invoked to block registrations for “Bullshit” for handbags, wallets, and beverages; “Asshole Repellant” for aerosol spray; “Sex Rod” in the same font as “Red Sox”. But then, it has not been invoked and registration has been granted for “MILFSDOPORN”, “Retardipedia”, “Big Titty Blend” (for coffee), and “Baked By A Negro”. So there’s a teensy issue about consistency.
And, of course, what makes The Slants’ case so delicious is that the band members are Asian Americans. This puts “The Slants” in that special class of “self-disparaging marks” or “reclaimed slurs”, along with such notable trademarks as “HEEB” (for magazines), “Dykes on Bikes” and any number of “Nigga” marks, in which the mark owner seeks to defuse the offensiveness by using a mark self-referentially. And makes a straight-faced argument for disparagement all the more difficult. And made the Supreme Court’s job here relatively easy. I mean, imagine if the case had been about the mark “Asshole Repellent”!
Most commentators have been quick to point out that the real winner here is the Washington Redskins football team, which had its previously-granted registrations revoked by the USPTO a couple of years ago, and that revocation upheld by several courts. The same law that was declared unconstitutional by the Supreme Court in The Slants case provided the basis for the revoking of the Redskins mark, so it looks like the vile Mr. Snyder is gonna get his Redskins registrations back.
But that’s part of the deal, and what makes First Amendment jurisprudence so difficult: it protects even the most heinous speech. As it should. And the arguments supporting free speech are getting harder to make above the din of political correctness, the coddling of millennials in their “safe spaces” and with their “trigger warnings”, and all the cacophony about fake news and hate speech. The notion of free speech is getting battered, and it’s reassuring that the Supreme Court, which rarely agrees internally about anything, came down in a fairly unified fashion (the decision was unanimous that the law was unconstitutional, but the reasoning as to why varied from judge to judge) in favor of free speech.
A few months ago I wrote about the USPTO rejecting all marks that had to do with cannabis because cannabis is still illegal under federal law. This position is based on the USPTO’s cribbed reading of a different part of the law, but it’s definitely related. And perhaps now that it’s been slapped down by the Supreme Court about decency, the USPTO will lighten up on weed.
And imagine what it’s like now at the USPTO! What a great time to be an trademark examiner, especially if your tastes tend toward the tasteless, the weird, and the offensive.
Paul Rapp is a local intellectual property attorney who, if he was a new law-school grad, would be applying for a position at the USPTO.