- Posted by Holmes Weinberg, PC
- On August 10, 2017
The world of branding, and the technical legal world of trademarks, are a lot more complex than most people understand them to be. For example, many branders don’t know the Trademark Law in the United States is really broad, granting protection to just about any “distinctive” designation that is used by the owner to identify and distinguish its products or services. For example, trademark protection in the US has been extended to slogans, logos, the shape of distinctive containers (think the Tanqueray® bottle), distinctive sounds (for example, the NBC network “bong, BONG, Bong!” theme), distinctive restaurant and car designs (including restaurant interiors), distinctive smells (I’m not kidding), and distinctive packaging designs (for example, the overall appearance of the Woodford Reserve bourbon package – I won that case for them!).
As trademark lawyers know, there are some designations that the Trademark law will not protect. These include designations that are confusingly similar to prior used and/or registered trademarks, deceptive names, the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, words that are descriptive of a quality or characteristic of the product or service with which it’s used, or of the geographic location where the product is made or services offered.
The US Trademark law also does not protect a designation that “consists of or comprises immoral, deceptive, or scandalous matter; or 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.”
That is, until this year; and here’s where it gets interesting.
A music group comprised of Asian men decided to try to federally register the band name “The Slants.” The US Patent and Trademark Office refused the registration because it was a name that “may disparage . . . or bring into contemp[t] or disrepute” any “persons, living or dead.” The rationale was that the mark would be perceived as a derogatory slang word for Asians, and thus disparaging. The band members argued that it isn’t disparaging, but the opposite – if Asians use that term it is a strong political statement and it was a “reclaiming” of the word for Asians – as the leader of the band stated: “We grew up with the notion that having slanted eyes was always considered a negative thing … Kids would pull their eyes back in a slant-eyed gesture to make fun of us. … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.”
This dispute found its way to the US Supreme Court, which in June decided in favor of the band, holding that the Disparagement Clause of the Trademark Act violates the First Amendment’s Free Speech Clause: as the Court stated it: “It offends a bedrock First Amendment Principle: Speech may not be banned on the ground that it expresses ideas that offend.”
This decision, while a victory for The Slants, is seen as a set-back for many Native American tribes, who for years have argued that the registration of names like “Redskins” was disparaging. It also opens the door for the federal registration of words that are intended to offend, and given today’s political climate, that could go to extremes. That said, the First Amendment is one of our nation’s most valuable rights, and this decision (especially Justice Kennedy’s concurring opinion in which Justices Ginsberg, Sotomayor and Kagan joined) can be read as safeguarding against government censorship of First Amendment protected speech.