During the past decade or so, the topic of disparaging trademarks, logos and team mascots has become more frequently discussed. It has even spurred action from some high school and college-level programs to change their mascots and mascot names from something that may be found to be offensive or disparaging. As noted in this column several months ago, trademarks are often viewed as source indicators for a product or service, and a federal trademark registration protects that mark throughout the 50 states and all U.S. territories.
There are several reasons that an examiner for the United States Patent and Trademark Office (USPTO) may deny a trademark application, and one is a portion of the Lanham (Trademark) Act known as the disparagement clause. This has prohibited many applicants from obtaining federal registrations that may be interpreted as disparaging to a significant number of people in a particular group. The disparagement clause (paraphrased) prohibited the granting of a federal trademark for matter which may “…disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”
Since the 1940s, this clause has been questioned because, while it was placed in the Trademark Act with good intentions, it is difficult to develop a standard for analyzing what is disparaging, particularly on the shifting sands of Americans’ sensitivity to such issues. However, in an opinion dated June 19 of this year, the Supreme Court ruled that the disparagement clause is unconstitutional. The ruling was 8-0 (Justice Gorsuch did not participate in the hearing or the decision) in favor of the plaintiff, Simon Tam of a band named “The Slants.”
In 2011, Tam named his band The Slants to (in his words) “reclaim” and “take ownership” of Asian stereotypes. The examiner refused to register Tam’s mark, finding it likely disparaging to “persons of Asian descent” under the disparagement clause. The examiner found that the mark likely referred to people of Asian descent in a disparaging way, explaining that the term “slants” had “a long history of being used to deride and mock a physical feature” of people of Asian descent. Despite the notion that Tam may have chosen the mark to “re-appropriate the disparaging term,” the examiner found that a substantial composite of persons of Asian descent would find the term offensive.
Tam’s case spent a few years in the legal system, and he eventually won on a First Amendment argument, meaning that his application for a trademark for “The Slants” can be given a federal registration. The reader may recall that the USPTO revoked six registered trademarks of the Washington Redskins in June 2014 after finding the marks to be disparaging to Native Americans. While the Supreme Court refused to hear a similar case against the Washington Redskins’ federal marks or combine that case with the Tam case, the ruling effectively allowed the Washington Redskins to reinstate at least some of their marks, despite the objections of some groups of Americans.
Indeed, The Slants and the Redskins both argued that the law was unevenly applied and gave too much control to the government. Some of the Justices indicated that the government was unevenly selecting speech for rejection that may be turned against a dissenting portion of the population or groups that are in the minority to effectively censor that opinion or group.
What does this mean for forging operations like yours? It is possible that some forging operations or product lines may include the names of local Native American tribes, and those marks may have federal trademark registrations in order to prevent other forging operations from using the same name and benefiting from the goodwill you have developed with your client base.
Now those federal registrations will be difficult to remove from the federal register should anyone interpret the inclusion of Native American tribe names as disparaging. Furthermore, it is difficult to predict what some groups of people may interpret as disparaging. Perhaps your forging operation owns trademarks that seem innocuous to many but are somehow interpreted as disparaging to some. These marks will also be difficult to remove from the federal register under the Tam ruling by the Supreme Court.