April 28, 2015

Should you be allowed to “disparage” yourself? Should the federal government penalize you if you disparage yourself? What if you are an Asian? If you, an Asian, and your Asian friends form a band, should you and your friends be penalized by the federal government if you choose to “disparage” your band by calling it “THE SLANTS”?

Apparently the federal trademark office, AND a panel of three judges of the Federal Circuit, agree that you should be penalized for calling your band “THE SLANTS”. HOWEVER, on April 27, the rest of the Federal Circuit judges voted to vacate that panel’s opinion, and start over, and so asked the band to submit a new appeal brief in 45 days. To be fair, Judge Moore, who wrote the 9-page opinion, affirming the trademark office’s refusal to register the mark “THE SLANTS”, also wrote 24 pages of what he called “additional views”, in which he questioned the constitutionality of the federal law that allows the trademark office to “refuse to register immoral, scandalous, or disparaging marks.”

So, the Federal Circuit instructed the band, and the trademark office, to submit arguments on the following issue:

“Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?”

That’s a good question, but shouldn’t the Federal Circuit judges also consider this question:

“If a trademark registration applicant wants to register a trademark that disparages his own products and services, shouldn’t she be allowed to do so?”

For example, THE SLANTS band had pointed out that the trademark office had previously granted a registration for the phrase “DYKES ON BIKES” (possibly a slur against homosexuals), “as evidence of the arbitrary nature of trademark adjudication.”

Judge Moore then pointed out that the law has been widely criticized, and cited to articles such as “The Cancellation of Redskins as a Disparaging Trademark: Is Federal Trademark Law an Appropriate Solution for Words That Offend?” (2001), and “Section 2(a) of the Lanham Act as a Restriction on Sports Team Names: Has Political Correctness Gone Too Far?” (1997).

It seems rather clear how the Federal Circuit is going to rule in a few months, when it reconsiders this case. In fact, Judge Moore basically wrote a summary of the arguments for THE SLANTS band to use for finding a violation of the First Amendment. He stated that the court must ask whether:

(1) “the asserted governmental interest is substantial,”

(2) “the regulation directly advances the governmental interest asserted,” and

(3) the regulation “is not more extensive than is necessary to serve that interest.”

As to the first requirement for finding a violation, he stated that “it is unquestionably true that trademarks are protected speech under Supreme Court commercial speech jurisprudence.”

As to the second requirement for finding a violation of the First Amendment, Judge Moore stated, “Section 2(a)’s content-based restrictions on registrability were adopted to reduce use of trademarks the government deemed unsuitable (such as those that disparage)—no doubt a chilling effect on speech.”

Finally, as to the third requirement for finding a violation of the First Amendment, Judge Moore stated,

“While the government may argue that it has an interest in discouraging the use of disparaging marks that may be offensive to persons, institutions, beliefs, or national symbols, this is not a legitimate government interest,”

“Trademarks—which are applied to private goods to identify the source of the goods for consumers—are private speech, not ‘government speech’.”

“We have yet to be presented with any substantial government interests that would justify the PTO’s refusal to register disparaging marks.”

About timheadley

For almost 30 years, as a lawyer, Tim Headley has been helping clients protect their intellectual property, according to the laws of patents, trademarks, copyrights, and trade secrets, not only in the United States, but in various countries around the world. Before that, he worked as an electrical engineer. Before that, he taught theology, in Spanish, to adult students, in the evenings, in a school in La Paz, Bolivia. You can contact him at tim@headleyiplaw.com, or his office phone, 713-467-8500, or his cell phone, 713-398-1045. His website is www.headleyiplaw.com.
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