What’s More Objectionable: the Words or the Policy?

in

World Intellectual Property Review recently conducted a survey of its readers on the question of whether they supported the U.S. Patent and Trademark Office (USPTO) policy of denying the registration of “disparaging” trademarks, and found that fifty-eight percent of respondents agreed with the USPTO policy.  The survey specifically addressed the USPTO’s recent, high-profile decisions to cancel six registrations incorporating the term REDSKINS, and to refuse registration of the mark THE SLANTS by an Asian-American band of the same name (see prior posts on the subject of disparaging marks here, here, here, here, and here).  Both decisions were based on § 2(a) of the Trademark Act (15 U.S.C. § 1052(a)), which provides, in pertinent part, that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) [c]onsists 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.”  Finding that the terms REDSKINS and SLANTS are disparaging to Native Americans and Asian Americans, respectively, the USPTO held both terms to be unregistrable under § 2(a).

From public commentary, it appears that the principal substantive objection to, and source of much of the controversy about, the disparagement provision of § 2(a) is that it denies registration based on the content of the mark, which some view as a violation of the First Amendment.  Regardless of one’s own views regarding the propriety of the terms REDSKINS and SLANTS, there is an argument to be made that the differential treatment of such terms under federal law constitutes both a restriction of free speech and a judgment by the government of the relative value of certain speech.  On the other hand, a refusal by the USPTO to register a trademark does not prevent one from using and enforcing the mark as a trademark for one’s products and services—it merely prevents federal registration of the mark.  It thus can be argued that § 2(a) places no actual restrictions on free speech, since people are still free to use terms that others find disparaging, disreputable, or otherwise offensive—although the government is still making a judgment of the value of certain speech.  In any event, the refusals of both marks are still being litigated, and it remains to be seen whether the constitutional arguments in favor of registration will prove more persuasive to the courts than they apparently were to the survey respondents.  Read the full article here.  Reposted from World Intellectual Property Review.