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Trademarks that Disparage

The United States Supreme Court recently heard oral arguments in Lee v. Tam, a case involving the denial of a trademark registration for an Asian American band called The Slants. The U.S. Patent & Trademark Office (“USPTO”) determined that the mark would violate the Lanham Act, which prohibits registration of trademarks “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.”

From the Washington Post:

The [USPTO] said the name was likely to disparage a significant number of Asian Americans. But founder Simon Tam said the point of the band’s name is just the opposite: an attempt to reclaim a slur and use it “as a badge of pride.” 

Tam lost in the first legal rounds. But then a majority of the U.S. Court of Appeals for the Federal Circuit said the law violates the First Amendment’s guarantee of free speech. The government may not “penalize private speech merely because it disapproves of the message it conveys,” a majority of the court found. 

The outcome of the Supreme Court case is likely to affect the legal case of the Washington Redskins, whose trademark registration was revoked in 2014 under the same disparagement clause. 

Justices questioned how the Lanham Act’s restrictions on negative marks should be balanced with constitutional guarantees of free speech, and what limits should be placed on the USPTO when presented with potentially offensive marks.

A decision is expected later this year.