The Slants’ Supreme Court Case Win May Help Washington Redskins

WASHINGTON (CBS NEWS) — The Supreme Court on Monday struck down part of a law that bans offensive trademarks in a ruling that is expected to help the Washington Redskins in their legal fight over the team name.

The justices ruled that the 71-year-old trademark law barring disparaging terms infringes free speech rights.

The ruling is a victory for the Asian-American rock band called the Slants, but the case was closely watched for the impact it would have on the separate dispute involving the Washington football team.

Slants founder Simon Tam tried to trademark the band name in 2011, but the U.S. Patent and Trademark Office denied the request on the grounds that it disparages Asians. A federal appeals court in Washington later said the law barring offensive trademarks is unconstitutional.

“I was ridiculed as a kid for having slanted eyes,” Tam told CBS News correspondent Jan Crawford in an interview broadcast before justices heard oral arguments in the case in January. “Now I’m saying it’s something that I can be proud of, not something to be ashamed of.”

The Redskins made similar arguments after the trademark office ruled in 2014 that the name offends American Indians and canceled the team’s trademark. A federal appeals court in Richmond put the team’s case on hold while waiting for the Supreme Court to rule in the Slants case.

In his opinion for the court, Justice Samuel Alito rejected arguments that trademarks are government speech, not private speech. Alito also said trademarks are not immune from First Amendment protection as part of a government program or subsidy.

Tam insisted he was not trying to be offensive, but wanted to transform a derisive term into a statement of pride. The Redskins also contend their name honors American Indians, but the team has faced decades of legal challenges from Indian groups that say the name is racist.

Despite intense public pressure to change the name, Redskins owner Dan Snyder has refused, saying it “represents honor, respect and pride.”

In the Slants case, government officials argued that the law did not infringe on free speech rights because the band was still free to use the name even without trademark protection. The same is true for the Redskins, but the team did not want to lose the legal protections that go along with a registered trademark. The protections include blocking the sale of counterfeit merchandise, and working to pursue a brand development strategy.

A federal appeals court had sided with the Slants in 2015, saying the First Amendment protects “even hurtful speech that harms members of oft-stigmatized communities.”

Comments

One Comment

  1. This is the decision that a lot of people were waiting for. I was hoping for it. A huge victory for free speech and trademark rights. In a way, Obama administration’s attack against Redskins’ trademarks provided a perfect example of the government usurping free speech and depriving a football team with a long history of one of their most valuable assets, their brand. In case you haven’t heard, just before the USPTO Trademark Trial and Appeal Board voted to cancel six trademarks owned by Redskins in 2014, President Obama in an interview said, “If I were the owner of the team and I knew that there was a name of my team — even if it had a storied history — that was offending a sizeable group of people, I’d think about changing it.” Whether TTAB’s decision was made with a view to Obama’s words is secondary. What matters is that it could have created a dangerous precedent when the government could destroy your property, just because they didn’t like your message. Because of the procedural status, Redskins’ trademarks were not the ones that the U.S. Supreme Court looked at in the Slants case, but everyone knew that its decision would create a precedent that would either allow Redskins to regain their trademarks or whether it would open the door to mass-expropriation of intellectual property by the government. In the Slants case, a band sought the court’s opinion that just because some may find the word “slants” offensive, it should not bar the music band with that name from registering it as a trademark. The case was more about free speech than it was about trademarks. Remarkably, the Supreme Court found that free speech trumps the government’s desire to suppress it. Duh!

    Justice Alito’s words provide a good insight on the dynamics of this case: “…it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things… It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public… For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike), or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”?”

    So yes, Slants will be able to get their trademarks registered. Redskins will probably be able to get their trademark registrations restored.

    Two other questions arise in this regard, however.

    First question is whether the decision of the Supreme Court would also do away with prohibition on registration of “immoral or scandalous matter”? The Slants case dealt with “matter that may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The Federal Court whose decision the Supreme Court affirmed found that “the disparagement proscription of [§1052(a) of the Trademarks Act] is unconstitutional. However, there are other proscriptions in §1052(a) of the Trademarks Act, namely a proscription against registration of immoral, deceptive, or scandalous matter. USPTO routinely denies registration of swear words as trademarks. In theory, the reasoning behind “scandalous and immoral” prescription is exactly the same, the government making a value judgement about the merits of the message, which was just found unconstitutional. On the other hand, the courts’ decisions only deals with a very narrow (although hugely important) provision. Looks like the decision of the Supreme Court should open the door to registration of a whole bunch of four-letter-worded trademarks. The real question is whether USPTO will require someone to try their case in court again.

    Second question is whether the decision of the Supreme Court would also open the door to registration of marijuana brands on the Federal level. Currently, because marijuana is not legalized federally in the U.S., USPTO refuses to register trademarks that have anything to do with what can be a federal crime. Granted, this issue is separate, but it’s a huge problem now that marijuana is legalized—and is becoming a massive industry—in several American states, while the players cannot properly secure that which allows their consumers to tell one brand from the other.

    It would be very interesting to see what influence this Supreme Court decision will have over the development of trademark laws in the U.S.

    Andrei Mincov
    Founder and CEO of Trademark Factory® / https://trademarkfactory.com, the only firm in the world that offers trademarking services with a predictable, guaranteed result, for a predictable, guaranteed budget. We can help you register your trademarks with a free comprehensive trademark search, for a single all-inclusive flat fee, with a 100% money-back guarantee.

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