Trademark law: Maybe the Redskins are right

Scott Forsyth, The Daily Record Newswire

Quick, what do the Washington Redskins and the Asian-American band named The Slants have in common? If you said monikers that some members of certain ethnic groups find offensive, you would be partially correct. They are also embroiled in litigation with the U.S. Patent and Trademark Office (PTO) over those monikers. And the ACLU has filed amicus briefs in support of both.

You have probably heard about the litigation involving the football team. The PTO granted it a trademark on “Redskins” four times between 1967 and 1990. In 2014, the PTO revoked the registration. In July a district court judge upheld the revocation, finding the mark was disparaging of Native Americans and therefore in violation of Section 2(a) of the Latham Act, 15 U.S.C. § 1052(a), Pro-Football, Inc. v. Blackhorse, No. 1:14-cv-01043 (E.D. Va. July 8, 2015).

Section 2(a) prohibits the registration of any trademark the PTO deems to “comprise immoral, deceptive, or scandalous matter; or matter which may disparage … persons, living or dead, … or bring them into contempt or disrepute.”

The band did not get as far as the football team. The PTO denied its initial application to trademark “slants,” because the office found the name to be disparaging of individuals of Asian heritage, In re Tam, No. 2014-1203 (B.P.A.I. Apr. 20, 2015).

Enter the ACLU. It contends the actions of the PTO violated the First Amendment, because Section 2(a) enables the PTO to engage in viewpoint discrimination. The ACLU seeks a narrow ruling striking down the portions of Section 2(a) that prohibit the registration of “immoral,” “scandalous” or “disparag(ing)” marks.

To better understand the ACLU’s argument, look at the situation of the band. Its members are five Asian-Americans, based in Portland, Oregon. They selected the name, in the words of the founder, “to take on the stereotypes that people have about us, like the slanted eyes, and own them.”

In academic terms the band is re-appropriating a slur, used against the Asian community, historically a disadvantaged minority, to remove the power of the slur. In First Amendment terms the band is making a political statement about the power of words and how the meaning of words can and should evolve.

State law gives the band some protection against persons who may trade on or otherwise infringe on its name. However, federal law is stronger, so the band sought to register “slants.”

The PTO acknowledged the band selected the name “to be self-depreciating and to attempt to re-appropriate the disparaging term.” However, the lack of a disparaging intent was not controlling. The word “slants” has traditionally carried racially derogatory overtones that evoke negative responses to this day.

The ACLU agreed the term may be considered disparaging by members of Asian groups. But, it countered, whether certain speech is disparaging is entirely distinct from the question whether government can disadvantage the speech because it is disparaging. And the answer to the latter question is a resounding no.

“If there is any fixed star in our constitutional constellation, it is no official, high or petty, can prescribe what shall be orthodox in politics, nationalism, religion, or other matters of opinion,” W. Virginia State Bd. Of Educ. v. Barnette, 319 U.S. 624, 642 (1943).

How has the PTO responded to the First Amendment challenge? First, it contends the band is only engaging in commercial speech, which it can freely regulate. In fact, the mark is a blend of commercial and political speech. The First Amendment protects both types of speech from viewpoint discrimination. Second, the denial of the trademark did not harm the band because its name still has protections under state law. While this may be true, the denial of federal protection, and the possibility of denial, create a financial
disincentive to engage in controversial speech. Such disincentives are unlawful.

Section 2(a) actually requires the PTO to discriminate on the basis of viewpoint. To determine whether a name is “immoral” or “scandalous” or “disparag(ing),” it must study the content of the mark to see if some persons may find the content offensive. And what is not offensive today may be offensive tomorrow. Witness the revocation of the Redskins trademark.

Third, the PTO claims a trademark is really government speech, not private speech. It cites a June Supreme Court decision, which held license plates were government speech and consequently the state did not have to issue a plate with a Confederate flag, as demanded by a veterans group, Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 576 U.S. __ (2015).

To compare trademarks, like Coke and ACLU, to license plates is to equate apples to beets. The former are not “closely identified in the public mind with” the government and historically have not been used “to urge action, to promote tourism, and to tout local industries.”

The holder of the mark, not the government, has editorial control over the mark. The holder, not the government, goes after persons who infringe on the trademark.

Being able to register a mark is a government benefit. The PTO cannot grant or deny the benefit based on its view of the message communicated by the mark. We may not agree with the message, but the First Amendment protects the right of all to express themselves.

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Scott Forsyth practices law in Rochester, New York, and serves as counsel to the local chapter of the ACLU, but the views expressed herein are his own.

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