Can Racial Slurs Be Trademarked?

The Supreme Court soon will decide whether a 70-year-old government ban on racist trademarks violates the First Amendment

Last Updated: May 22, 2017 @ 8:35 PM

When the U.S. Patent and Trademark Office (USPTO) rejected an application by the rock band the Slants to trademark its name, the agency put forth a simple reason: the name disparages Asian-Americans.

The Slants’ frontman Simon Tam and his three Portland, Oregon-based bandmates are Asian-Americans who say they chose the to re-appropriate the racial slur, and strip it of its hateful meaning.

But federal trademark officials said motive didn’t matter, citing an obscure 70-year-old federal law banning government-approved trademarks that “may disparage… persons, living or dead, institutions, beliefs, or national symbols.”

Tam appealed the trademark office’s decision, and his case is now being decided by the Supreme Court. The court is expected to issue its decision in the next few weeks.

Tam’s case pits supporters on one side who argue they are fighting for free speech rights, and opponents who warn a Slants victory will require government approval of all kinds of hateful racial slurs, including the n-word.

When the government grants a trademark to a business owner, the owner gains the exclusive legal right to use the name on products and merchandise such as T-shirts. But some say the government approval of trademarks confers more than a commercial benefit and suggests tacit government approval of the slurs.

During oral argument before the Supreme Court on January 18, the justices hammered both sides with questions.

Justice Elena Kagan asked whether the First Amendment rule that prohibits the government from discriminating against disfavored views applies to the trademark’s ban on “bad” trademarks.

“The point is that I can say good things about something, but I can’t say bad things about something” in a trademark, she said. “And I would have thought that that was a fairly classic case of viewpoint discrimination.”

Justice Anthony Kennedy expressed skepticism at the government’s argument that trademarks are commercial speech that do not express ideas.

“We have a culture in which we have T-shirts and logos and rock bands and so forth that are expressing a point of view,” Kennedy said. “They are using the market to express views.”

Tam won an important court victory last year, when the U.S. Court of Appeals for the Federal Circuit agreed that the government cannot disfavor some speech when giving government benefits like trademark registrations.

“The First Amendment forbids government regulators to deny registration because they find the speech likely to offend others,” Judge Kimberly Moore wrote in the court opinion.

Among those opposing the Slants in the Supreme Court is the group of Native American that won cancellation of the Redskins football team trademark in a 2014 4th Circuit Court of Appeals ruling, on the grounds that the name is disparaging of Native Americans. The Redskins case is on hold pending the Supreme Court decision in the Slants case.

“If this Court rules that [the disparagement ban] is unconstitutional, the USPTO would have to issue registration certificates with ugly racist images,” warned the lawyers for Amanda Blackhorse and four other Native Americans in their friend-of-the-court brief filed with the Supreme Court in 2016.

If the disparagement ban is thrown out by the court, the group warned in its brief, the trademark office will go back to the days before Congress banned disparaging trademarks in the 1946 Lanham Act. Prior to that law, the government approved several trademarked variations of the n-word, including “N- Head Prize Ice Cream,” “N- In De Cane Patch,” “N- Baby Brand,” and “N- Head Coal.”

No one mentioned the n-word during oral argument before the Supreme Court, but Justices Ruth Bader Ginsberg and Sonia Sotomayor expressed concern that requiring the government to approve racist trademarks would suggest that the government approves the message of hate.

“But doesn’t the government have some interest in disassociating itself from racial [and] ethnic slur — slurs?” Justice Ginsberg asked Slants lawyer John Connell.

Justice Sotomayor asked the Slants lawyer if the First Amendment required the government to issue a trademark for the phrase “Trump is a thief,” even if the phrase disparaged him and was false and defamatory.

“I believe that’s correct,” Connell said.

“That makes no sense,” Justice Sotomayor responded.

Georgetown Law School professor Rebecca Tushnet filed a friend-of-the court brief on behalf of a group of law professors who argue that the ban on disparaging trademarks does not violate the First Amendment because the Slants can use their name in any way they want, just not in a government-approved trademark.

“The brief basically argues that denying registration is not the same thing as suppressing speech,” Tushnet told TheWrap in an email.

“The Slants can call themselves that, and register some other trademark image or design they use, just as someone can put a Confederate flag bumper sticker on their car when they can’t get a Confederate flag license plate,” Tushnet said, referring to the 2015 Supreme Court decision allowing the State of Texas to reject government-issued Confederate flag license plates to avoid the appearance of government endorsement of a symbol of slavery.

In addition to arguing that the ban on disparaging trademarks is unconstitutional viewpoint discrimination, the Slants also argue that the anti-disparagement provision is unconstitutional because it is too vague for anyone to obey. Justice Ginsburg seemed to agree, noting that the anti-Semitic slur “Heeb” was permitted to be trademarked in some cases but not others.

The government lawyer, Deputy Solicitor General Malcolm Stewart, said those seemingly conflicting decisions were the result of human error during evaluations of 300,000 annual trademark applications, not because the statute was too vague.

Justice Sotomayor suggested the government denial of the trademark did not restrict the Slants’ freedom of speech outside of the trademark realm. “No one’s stopping your clients from calling themselves ‘the Slants’ [or] from advertising themselves that way,” she said during oral argument.