https://archive.org/details/LegalGeekEp108
In the Lanham Act that defines federal trademark rights in the U.S., Section 2 defines a series of grounds upon which a trademark application can be refused registration. One of these grounds is if the trademark consists of "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute". In other words, offensive and disparaging trademarks can be denied registration under this so-called disparagement clause. This clause has been in effect for over 70 years, as it was in the original 1946 Lanham Act.
As you'll recall, both the Washington Redskins football franchise and the Asian rock band The Slants were fighting separate high-profile court battles to contest the constitutionality of this disparagement clause. We most recently discussed this 18 months ago when The Slants won at the intermediate federal court, but this case was taken up by the Supreme Court to settle it for all such disputes. And this week, The Slants won again.
The Slants are comprised of Asian-Americans, and while their band name is a derogatory term towards their race, they chose the band name to reclaim the term and drain any denigrating force it had over people of their race. Simon Tam, a singer in the band and lead plaintiff in this case, was denied federal trademark registration based on the disparagement clause of the Lanham Act. Despite presenting boatloads of survey evidence and arguments to convince the Examining Attorney at the US Trademark Office that there was no disparaging effect, but quite the opposite, the trademark was always denied.
By the time this case reached the higher courts, the key issue became whether the ban on disparaging trademarks is constitutional, or a violation of First Amendment free speech rights. Although the final opinion is complicated with many concurring opinions, the primary part of the Supreme Court decision was a unanimous 8-0 in favor of striking this disparagement clause as an unconstitutional violation of First Amendment rights.
The government tried to argue that trademarks are government speech, which is not subjected to First Amendment scrutiny. The Court disagreed, determining that trademarks are definitely private speech because if the whole register of trademarks were considered government speech, the government would be babbling "prodigiously and incoherently" according to Justice Alito's opinion. In short, if a limited government approval process were enough to convert private speech to government speech, this would be a dramatic expansion of items not covered by Free Speech protections, including potentially all copyright registrations. That's not a step the Supreme Court was comfortable with, for obvious reasons.
Unlike the rest of the trademark refusal grounds in Section 2 of the Lanham Act, which are viewpoint neutral and are based on things relating to consumer confusion as to the source of goods and services, AKA the entire point of trademark law, the disparagement clause discriminates based on particular viewpoints. It does not fit with the rest of trademark law, and it violates the First Amendment in the Court's judgement, so this part of the Lanham Act is now gone after 70 years. That victory for free speech may result in some nasty word and phrase trademarks in the future, but it's a win for the Redskins and The Slants all the same.
The same section of the Lanham Act also bans immoral and scandalous marks from registration, but this also seems to be inconsistent with the rest of trademark law and will likely go down as unconstitutional in parallel cases ongoing now.
The Bottom Line is, the disparagement clause and other offensive mark refusals were always tough for Trademark Office Examining Attorneys to judge, and this ruling should bring clarity as Examiners focus more on consumer confusion and the core tenets of trademark law rather than whether something may be offensive. Even if free speech protections allow a few "bad apple" disparaging marks to be registered in the future, consumers can always vote with their wallets to effectively reject the use of such trademarks in commerce.
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