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The US trademark office can now expect a flood of offensive name applications

·Alexandra J. Roberts
Members of the Asian-American rock band The Slants (L-R): Tyler Chen, Ken Shima, Simon Tam, Joe X. Jiang pose in Portland, Oregon, U.S., August 21, 2015 in a picture released by band representatives. Anthony Pidgeon/Handout via Reuters
Members of the Asian-American rock band The Slants (L-R): Tyler Chen, Ken Shima, Simon Tam, Joe X. Jiang pose in Portland, Oregon, U.S., August 21, 2015 in a picture released by band representatives. Anthony Pidgeon/Handout via Reuters

All-Asian-American dance band The Slants has been fighting for the right to register its own band name as a federal trademark for over a decade.

On Monday, the Portland, Oregon-based band won its long legal battle.

The US Patent and Trademark Office (USPTO) had refused to register The Slants based on part of section 2(a) of the federal trademark law, the Lanham Act, which barred the registration of any mark 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.”

Now the US Supreme Court has ruled 8-0 that the Lanham Act’s ban on registering disparaging marks ran afoul of the First Amendment.

A core part of the government’s case was the argument that a trademark registration counts as government speech. But in his majority opinion, Justice Samuel Alito noted that if federal registration rendered trademarks government speech, then the government is “babbling prodigiously and incoherently.” There are more than 2 million marks with active federal registrations, so Alito was basically dismissing the idea that the government is saying 2 million different things. Rather, the court ruled, trademark registration constitutes neither the government’s speech nor its approval or endorsement of the mark or its message.

While the government does have an interest in preventing hateful or offensive speech, the First Amendment safeguards the freedom to express it.

The Redskins, Kink.com, and F–kingMachines

The Washington Redskins have been fending off similar challenges to its trademark registrations—including its word marks and logos—since the early 1990s. And another party, Kink.com, had unsuccessfully challenged the USPTO’s refusal of its application to register “F–kingMachines” as a trademark for entertainment services. (It’s a sex-toy porn website.)

Simon Tam, frontman for The Slants, says he chose the band’s name in part to reclaim a slur historically used to keep Asian-Americans down. In doing so, he followed in the footsteps of groups like Queen, NWA, and Pussy Riot—artists that attempted to take terms long used to stigmatize marginalized groups, reappropriate them, defang them, and imbue them with new meaning.

In this Dec. 26, 2015, file photo, a Washington Redskins helmet sits on the field as players warm up before an NFL football game against the Philadelphia Eagles in Philadelphia. AP Photo/Matt Rourke
In this Dec. 26, 2015, file photo, a Washington Redskins helmet sits on the field as players warm up before an NFL football game against the Philadelphia Eagles in Philadelphia. AP Photo/Matt Rourke

The team that calls itself the Redskins, meanwhile, has no such proud history. The team name and logo were selected not by Native Americans reclaiming an offensive slur; rather, they represent examples of the derogatory stereotypes many Native American communities have spoken out against for decades.

A federal court canceled six of the Redskins’ registrations based on the same section of the Lanham Act that impeded The Slants. And when The Slants appealed the USPTO’s refusal to register its trademark all the way up to the Supreme Court, lawyers for Pro Football Inc (the name of Redskins owner Dan Snyder’s company) and Kink.com filed briefs as friends of the court, as did the Cato Institute and the ACLU.

As for F–kingMachines, the name doesn’t denigrate a particular group, but applications to register trademarks containing the F-word are typically refused. That’s true whether the uses are particularly misogynistic or graphic, or more neutral. While trademark owners do not need to register their marks in order to use them, registration makes it easier for owners to stake out nationwide rights, put competitors on notice of those rights, and enforce their marks against infringing uses. That is: if you own a trademark, it behooves you to register it with the USPTO.

The Supreme Court struck down the portion of the Lanham Act that barred registration of disparaging marks because it is not viewpoint-neutral—rather, it instructs USPTO examining attorneys to consider the content of a given trademark and determine whether the content is acceptable or offensive in the eyes of that administrative agency. Under that rule, the USPTO is supposed to grant a neutral or benign mark, but refuse a derogatory one. In his concurring opinion, Justice Anthony Kennedy agrees: “The government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys.”

A wild ride for the USPTO

After this ruling, The Slants will finally get their registration. The Redskins are free to keep their existing registrations and apply for others, and no one can challenge them on the basis that they disparage Native Americans or any other group.

That’s not to say those offended by the Redskins’ name shouldn’t continue to speak out, protest, boycott, and otherwise demonstrate their opposition to the team’s choice of name and imagery. But federal trademark law no longer has any say in the matter. (Dan Snyder put out a celebratory statement after Monday’s court decision: “I am THRILLED. Hail to the Redskins.”)

For F–kingMachines, the future is not quite as clear. The Supreme Court appeared to limit its opinion to disparaging marks and did not explicitly address whether the bar on registering immoral or scandalous matter remained intact. But other courts have conflated the categories.

In the words of the majority opinion, refusing to register offensive marks constitutes viewpoint discrimination because “giving offense is a viewpoint.” It is hard to imagine a scenario in which the bar against registering immoral or scandalous matter can survive, since it constitutes the same type of viewpoint discrimination based on its potential to offend the sensibilities of certain consumers. What’s more, the government interest in protecting marginalized groups against hate speech in the form of disparaging marks seems far greater than its interest in protecting the public against crass language or immoral ideas.

As for the USPTO, it may be in for a wild ride. Given the onslaught of racist, homophobic, misogynistic, and anti-semitic hate speech reported in recent months, and a backlash against political correctness that has slowly but increasingly gathered steam, the handful of applications already filed to register “Grab her by the Pussy,” for example, may be just the beginning.

In other words: Because of The Slants ruling, the USPTO can expect a flood of potentially offensive trademark applications for terms that, in the past, would not have passed muster. Love that or hate it, the Supreme Court has spoken.

The ability to combat offensive marks now rests squarely with consumers and major retailers.

Just as consumers can (and do) speak out against companies that exploit sweatshop labor, or boycott those that fund political campaigns they oppose, those who find particular trademarks offensive will need to vote with their wallets to pressure those companies to change their ways—or their names.

Alexandra J. Roberts is an associate professor at the University of New Hampshire School of Law, specializing in intellectual property, trademarks and unfair competition, and entertainment law. Follow her on Twitter @lexlanham.

Disclosure: The author is the sister of Yahoo Finance writer Daniel Roberts.