On September 29, 2016, the US Supreme Court agreed to hear arguments on the following constitutional question arising from the attempt by Simon Tam, the leader of an Asian-American dance band, to federally register the trademark SLANTS, which is considered offensive and disparaging to many (including the U.S. Patent and Trademark Office):
“Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.”
In an unusual scenario, both the U.S. Patent and Trademark Office and Simon Tam sought review and a final decision from the Supreme Court.
At stake is whether trademarks such as SLANTS, REDSKINS, and other terms considered by at least some to be disparaging or offensive will be entitled to the enhanced protection afforded federally registered trademarks. As the language of public discourse, trade, and even presidential politics coarsens, it seems inevitable that business interests will seek to protect and monetize attention-getting phrases until recently not generally spoken aloud. For example, since January 2016, when it was becoming apparent that offensive terms might be registrable in the USPTO, no less than 19 trademark applications containing the notorious “F”-word have been filed for registration, covering products from toys and clothing to skin cream and tweezers. Whether any (or perhaps all) of them will ever reach registration now hinges on the decision of the Supreme Court.
-John C. Baum