The U.S. Supreme Court determined that the “disparagement clause” in the Lanham Act was unconstitutional in Mahal v. Tam (aka The Slants rock band case). The opinion validates the reclamation project of Simon Tam, leader of The Slants, who wanted to use the name to take back the derogatory term the name holds for Asians and Asian Americans. But, the fight to reclaim a stereotypical name also opens the floodgates to an enormous amount of applications that could seemingly offend many people. While the Court focused on the bedrock principles of the First Amendment, concerns over race still were prevalent from amicus briefs filed by various organizations.
The opinion written by Justice Alito denounced the allegation that trademarks equate to Government speech. It treads carefully in extending its government-speech precedents for the concern that the government could be seen as silencing or “muffle the expression of disfavored viewpoints.”
But the racial component of this decision is still important but was not given due chance in this ruling.
Race still matters in the United States stated an amicus brief filed by the Fred T. Korematsu Center for Law and Equality. The opponents of The Slants argued that the government’s interest was not to suppress speech but “to promote the orderly flow of commerce,” and thus Section 2(a) is content neutral and constitutional.
The brief brought up examples of names on federal maps which were named after racial slurs for African Americans and Japanese. It stated that the government may decline to allow others to use the programs to contribute to discrimination.
It uses the USPTO’s cancellation of the Washington Redskins football team being a “racist trademark” as an example of the government “can, consistent with First Amendment principles, cancel or refuse to register a racially disparaging trademark given the substantial interest in an orderly flow of commerce.” It made the point that refusing registration under Section 2(a) does not mean that the entity cannot use the name, it just cannot register it with the USPTO. In conclusion, the brief noted that a decision in favor of The Slants would mean marks like “Spics Not Welcome” and “Muslim Free Zone,” would be available for trademark registration under the USPTO.
Another amicus brief filed by Native American Organizations cite that the “disparagement clause” advances substantial governmental interests in limiting disparaging speech in commercial contexts. It also focused on the long history of trademarks that disparage Native Americans including the aforementioned Redskins mark.
The Asian American Advancing Justice amicus brief argued that the Court should issue a narrow ruling and not determine that the “disparagement clause” was unconstitutional. It provides the Court with what it argues is a balanced approach for all parties by providing a formulaic analysis to account for free speech concerns and considers “the interests of minority groups in guarding against disparagement.” It is unknown whether this approach would include an examining attorney to decipher whether an applicant’s are well-intentioned.
The Slants decision will make it easier to determine outcomes when registering trademarks that might tend to be considered offensive. The Examining Attorneys’ decisions on whether a mark might offend were inconsistent as they would engage in varied interpretations of Section 2(a). However, the Court did note that the First Amendment did not extend to words typically exempted from the definition of “speech.” Thus, words that might be considered obscene or incite would still be barred from registration. Yet, what of issues where there are reclamation projects like The Slants? While Simon Tam’s band may have won, one might wonder if they allowed those seeking to make derogatory statements about a certain group easier to trademark.
The opinion considered the potential for the expansion of government speech which would have been impacted with a ruling that could be applied to copyright registrations.
For many concerned with the potential ramifications it might have on minority groups, there appears to be no safeguard. While obvious derogatory statements will still be precluded from registration by the USPTO. Not-so-subtle marks may pass the test for registration. Unless the legislative branch seeks to amend the Lanham Act to add a section for those seeking to reclaim a derogatory mark, there seems to be no safeguard.