California Intellectual Property Blog


The Supreme Court Strikes Down Law Banning Offensive Trademarks

Orange County – The United States Supreme court has ruled in favor of an Asian American rock band who were refused by the trademark office when they applied to trademark their band name the Slants. In their decision, SCOTUS unanimously struck down part of a 71-year-old law that banned “disparaging” terms from being trademarked. According to the court ruling, the law that had banned offensive trademarks infringed on free speech rights, which are guaranteed by the First Amendment of the Constitution.

Simon Tam, the founder of The Slants, said he was “beyond humbled and thrilled” with the decision. According to Tam, the band did not choose its name to be offensive. They were trying to change a derisive term into a statement of pride. Tam had tried to trademark the name in 2011, but the trademark was denied by the U.S. Patent and Trademark Office because it was viewed as offensive to Asian Americans.

The SCOTUS decision has wide-ranging implications. Most notably, the federal case concerning the trademark of The Washington Redskins of the NFL was placed on hold until after the SCOTUS ruled on The Slants. In 2014, the US Patent Office ruled that the Redskin’s brand was offensive to Native Americans and cancelled the team’s trademark. The Washington Redskins have been in legal challenges with the United States government ever since. According to the Redskin’s trademark attorney, Lisa Blatt, the SCOTUS ruling “effectively resolves” the dispute between the NFL team and the government since it now appears that the Redskins name will regain federal trademark protection.

While the decision among the SCOTUS justices was unanimous, the rationale behind the decision was not. In his opinion, Justice Samuel Alito stated that the 71-year-old law that was struck down offends a “bedrock First Amendment principal.” He goes on to explain that the court has no place in preventing speech that is offensive to certain people or populations. In his opinion, the law is obligated to protect freedom to express thought, even thoughts of hate.

In a separate opinion, Justice Anthony Kennedy stated that the ban on disparaging trademarks expressed a form of “viewpoint discrimination” that is forbiden under the First Amendment. He goes on to argue that any law that can be directed against a point of view deemed “offensive” by one population, can be turned on a minority population or dissenting views. Such a law would be detrimental to the entire nation he reasoned.


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