By UpCounsel Intellectual Property Attorney Johnny Manriquez

A trademark is a word, phrase or logo that identifies and distinguishes a group and protects brands under federal law.

Simon Tam, the lead singer of the rock group The Slants, sought to have this term federally trademarked as a way of taking back a derogatory term used against Asian persons. Tam’s intent was to reclaim and take ownership of stereotypes about people of Asian ethnicity.

Tam’s trademark application was denied by the United States Patent and Trademark Office (USPTO) on the grounds that the applied mark was offensive to a substantial composite of persons. Tam contested the denied registration before the USPTO’s Trademark Trial and Appeal Board (TTAB) but to no avail.

Tam appealed the TTAB ruling to the federal circuit, whereby the en banc Federal Circuit found the disparagement clause to be facially unconstitutional under the First Amendment’s Free Speech Clause. The Government filed a petition for certiorari to decide whether the disparagement clause is facially invalid under the Free Speech Clause of the First Amendment. The Supreme Court affirmed the Federal Circuit’s judgement.

The focus of this article is to examine the process by which the USPTO analyzes marks for disparagement and the reasons why the Supreme Court has found the disparagement clause to be facially unconstitutional under the Free Speech Clause of the First Amendment.

Disparagement Clause 15 U.S.C. § 1052(a)

Trademark law is protected by federal legislation and at its roots is the Lanham Act, which was enacted in 1946. Under this federal body of law, trademarks used in commerce may be federally registered and in turn this framework supports the free flow of commerce. As part of the trademark examination process, the Lanham Act bars certain trademarks from the principal register.

For example, a trademark application may be barred if the trademark presented is merely “descriptive” or if it is “likely to cause confusion” with an already registered mark. At issue of late is Lanham Act provision §1052(a), which allows a Trademark Examiner to bar a trademark application based on disparagement.

A closer reading of §1052(a) allows a trademark application to be prohibited from registration if the intended mark “may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

How Does a Trademark Examiner Determine “Disparagement”?

During the trademark examination process at the USPTO, a trademark examiner generally applies a “two-part test” to determine whether a mark is disparaging. The first thing an examiner would consider is the “likely meaning of the matter in question…the relationship of the matter to other elements of the mark…nature of the goods or services…and manner in which the mark is used in the marketplace…”

If the examiner finds in the first step that the submitted mark’s meaning refers to “identifiable persons, institutions, or national symbols,” then the examiner moves to the second step, which asks “whether that meaning may be disparaging to a substantial composite of the referenced group.”

The analysis continues within the context of whether a “substantial composite, not necessarily a majority, of the reference group would find the meaning disparaging in the context of contemporary attitudes.” If the examiner finds that a substantial composite would find the meaning disparaging, then the USPTO has made a prima facie case of disparagement and the burden shifts to the trademark applicant to prove that the trademark is not disparaging.

Against this backdrop of disparagement analysis, the USPTO has admitted that the guidelines “for determining whether a mark is scandalous or disparaging are somewhat vague and the determination of whether a mark is scandalous or disparaging is necessarily a highly subjective one.”

Adding to this nebulous mix of determining whether an applicant’s mark is disparaging is the USPTO’s observation that “…[disparagement determination] is highly subjective and, thus, general rules are difficult to postulate.” The subjectivity inherent in a disparagement analysis has resulted in unpredictable registration results for applicants and no uniform standard on the Federal level.

Does the Disparagement Clause Violate Free Speech?

In the Slants case, the disparagement clause warranted examination under the Free Speech Clause of the First Amendment because it applies to marks that disparage members of a racial or ethnic group. The Slants Court recognized the fact that the “First Amendment forbids government to regulate speech in ways that favor some viewpoints or ideas at the expense of others.”

The “viewpoint neutrality” sought to be implemented by the USPTO when evaluating trademark content is the impetus for rendering the disparagement clause facially defective. Essentially, the USPTO had been regulating the “content of trademarks” based upon the viewpoint that it appears to express. This very exercise is a regulation of free speech and is not within the purview of the USPTO’s powers.

Writing for the Slants Court, Justice Alito reiterated the principle that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”

In a separate opinion, Justice Kennedy explained in greater detail that the First Amendment protections against viewpoint discrimination apply to trademarks because the language of §1052(a) seeks to allow an “applicant [to] register a positive or benign mark but not a derogatory one. The law thus reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.”

Disparagement in Light of The Slants

As the Slants Court has clarified, the content of a trademark is private speech and does not fall under regulation of speech in the same accord as government speech. Given the fact that a trademark is private speech, the USPTO cannot regulate speech content based on §1052(a).

A variety of cases previously before the TTAB have been decided on the basis of disparagement and it will be interesting to note whether any of these cases will be overturned or whether new applications will be submitted based on their contents.
Even if federal trademark registration will allow marks viewed as “disparaging” under §1052(a), time will tell whether this will have an impact on third-party sites and/or entities that may independently regulate disparaging content.

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About the author

Johnny Manriquez

Johnny Manriquez

As a registered patent attorney, Johnny's greatest sense of accomplishment comes with helping his clients map out their IP plans.

He has worked with start-ups through public companies both in the life science and high tech sectors. In addition to his IP transactional experience, he has large firm litigation experience which allows him to give clients a realistic picture of what issues could be contested.

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