Supreme Court rules the government can’t refuse to register trademarks considered offensive

Redskins declare victory after Asian-American band wins challenge to disparagement ban.


The Supreme Court has declared unconstitutional the federal government’s practice of refusing to register trademarks that officials deem to be offensive on racial, religious or similar grounds.


The justices ruled, 8-0, in favor of Simon Tam, the front man for an all-Asian-American rock band known as “The Slants.”


The U.S. Patent and Trademark Office had refused to register the band’s name, citing a law that denied trademarks that disparage individuals, institutions, beliefs or national symbols.


The result in the closely-watched case could doom legal challenges to other trademarks many consider offensive, such as that for the Washington Redskins football team. The team’s owners backed the musician’s attack on the anti-disparagement rule.


The eight justices who considered the case held unanimously that the clause banning registration of disparaging trademarks violates the First Amendment.


“It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend,” Justice Samuel Alito wrote.


An attorney for the Redskins football team, Lisa Blatt, said the ruling amounts to an outright victory for the team’s battle to hang onto its trademarks.


“The Team is thrilled with today’s unanimous decision as it resolves the Redskins’ long-standing dispute with the government,” Blatt said. “The Supreme Court vindicated the Team’s position that the First Amendment blocks the government from denying or canceling a trademark registration based on the government’s opinion.”


Alito had the full support of the justices for the conclusion that trademarks are private speech, not government speech.


“It is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently,” Alito wrote. “It is saying many unseemly things…. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.”


However, no majority of the court agreed on precisely what legal standard to apply in the case.


Three of the court’s liberal justices and Republican-appointed Justice Anthony Kennedy filed a concurring opinion that suggested their colleagues were going too far in seeking to protect commercial speech. They appeared concerned that giving too much protection to businesses could undercut legitimate government regulation against false advertising and misleading marketing.


“It is well settled, for instance, that to the extent a trademark is confusing or misleading the law can protect consumers and trademark owners,” Kennedy wrote, in an opinion joined by Justices Ruth Bader Ginsburg, Sonia Sotomayor and Elena Kagan. “This case does not involve laws related to product labeling or otherwise designed to protect consumers….These considerations, however, do not alter the speech principles that bar the viewpoint discrimination embodied in the statutory provision at issue here.”


Kennedy said the courts have only permitted viewpoint discrimination where the government is seeking to endorse a particular message.


“The Government has provided the benefits of federal registration to millions of marks identifying every type of product and cause,” Kennedy wrote. “Registered trademarks do so by means of a wide diversity of words, symbols, and messages. Whether a mark is disparaging bears no plausible relation to that goal.”


Justice Steven Breyer parted company with his liberal colleagues by joining with the court’s most conservative justices in a portion of Alito’s opinion that warned of the dangers of trying to regulate commercial speech.


“There is…a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense,” Alito wrote, joined by Breyer as well as Chief Justice John Roberts and Justices Clarence Thomas. “The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.”


Alito also noted that the clause seems to ban disparaging anyone about anything, so doesn’t seem to be particularly useful at protecting minorities.


“It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause,” he wrote.


The decision did not address other parts of trademark law that ban registration of “immoral” or “scandalous” marks.


A spokesman for the U.S. Patent and Trademark Office, Paul Fucito, said his agency is studying the ruling and will update its policies as appropriate.


“We are currently reviewing the decision,” Fucito said in a statement. “As always, we will continue to follow the trademark laws in examining applications. We plan to issue further guidance following a careful review of the Court’s decision.”


Justice Neil Gorsuch, who joined the court in April, did not take part in the ruling.


Original article by Josh Gerstein via Politico