On June 19, the Supreme Court of the United States unanimously affirmed a 2015 en banc decision of the Federal Circuit which had found that 15 U.S.C. Â§ 1052(a) of the Lanham Act was unconstitutional under the First Amendment’s Freedom of Speech Clause. The Court’s decision marks a contemporary application of the First Amendment to trademark law such that many applicants and registrants have significantly broader protection of their marks. Essentially, companies, individuals, and their legal representatives no longer need to consider the potential “offensive” nature of their marks when applying for federal registration.
Section 1052(a) denies protection to disparaging trademarks. In this case, an Asian-American dance-rock band named the Slants applied for a trademark protecting their namesake. During prosecution of the applied-for mark, the Slants’ representative noted that by calling themselves a derogatory term, the band is reclaiming the term for their culture and reinventing it such that the term loses its disparaging power. However, the United States Patent and Trademark Office denied registration and further defined the Section by claiming that “reclamation of disparaging terms or phrases did not elevate the material to that warranting protection.”
In making its decision, the Court did not have to consider reclamation. Instead, the Court struck down the Act’s provision on its face as precariously close to government controlled viewpoint discrimination—or as Justice Alito called it, “a happy-talk clause” akin to governmental censorship. The Court reasoned against the government’s rationales by simply noting that privately created and owned trademarks do not morph into government created speech, and therefore more heavily regulated, by slapping a government seal on it via registration. Citing the First Amendment, the Court held that the Freedom of Speech clause blocks the government from denying or canceling a trademark registration based on the government’s opinion.
Overall, the decision paves the way for those businesses and individuals seeking to register or maintain similarly disparaging marks. For example, in the Redskins case, the Trademark Office registered the team’s trademarks in 1967, 1974, 1978 and 1990. In 2014, however, the Office reversed course and canceled six registrations, saying the marks disparaged Native Americans. In light of the Court’s most recent ruling, it appears that the team’s appeal in response to the cancelations is sure to prevail.
 This decision by the USPTO is interestingly inconsistent with previous registrations allowed by the Office including, but not limited to the marks Heeb, Dago, Injun,Redskins, and Squaw.
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