Free speech in trademarks has been a long existing principle only to be recently circumscribed. Ideas in naming something personal, such as exercising an expression for a trademark, could otherwise be prohibited if it were not for the constitutional principle of free speech. Imagine starting a company and devising a slogan to register as a service mark with the U.S. Patent and Trademark Office, and to your chagrin, it is rejected by the analyzing attorney because he or she finds it offensive. Without the USPTO establishing a legitimate interest proscribing the success of the expression, its actions are deemed unconstitutional.
This experience occurred with a music band out of Portland Oregon, named the “Slants.” The leader of the band named the band the “Slants” and proceeded to file for a trademark. The idea was to appropriate the word and its meaning in society. The District Court affirmed the USPTO Board’s decision to reject the registration. The band leader filed for trademark protection, as the court notes to ““reclaim” and “take ownership” of Asian stereotypes.” But on appeal, the U.S. Court of Appeals for the Federal Circuit noted, “the band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes, and its albums include “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” The band “feels strongly that Asians should be proud of their cultural heritage, and not be offended by stereotypical descriptions.” The Court also noted, that “with their lyrics, performances, and band name, Mr. Tam and his band weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.”
The U.S. Court of Appeals for the Federal Circuit stated that “Section 2(a) of the Lanham Act bars the Patent and Trademark Office (“PTO”) from registering scandalous, immoral, or disparaging marks. 15 U.S.C. § 1052(a).” The provision barring registration based on disparagement first appeared in the Lanham Act in 1946. Pub. L. 79-489, § 2(a), 60 Stat. 427, 428 (codified at 15 U.S.C. § 1052(a)). The Court stressed that the government enacted this law because it disapproves of the messages with disparaging marks. What stands clear in this case is that the underlying current of the First Amendment is that government cannot impugn private speech because it disapproves of the message. The Court described that lower courts have not appreciated the strength of trademarks expression. In this there is a value to the expression that should not be stymied. The band’s naming was in and of itself an expression of private import with cultural and racial meaning raising issues worthy of discussion. The Federal Circuit Court expressed that the naming of the band conveys more “about our society than many volumes of undisputed protected speech.” The Court did note strongly that the “First Amendment protects even hurtful speech.”
Despite the presence of the Section 2(a) of the Lanham Act provision, only in the recent past has this provision been a basis for rejecting trademarks. Recently, marks deemed worthy to cancel by the USPTO Board are, and are on appeal: REDSKINS, Pro-Football, Inc. v. Blackhorse, STOP THE ISLAMISATION OF AMERICA, In re Geller, 751 F.3d 1355 (Fed. Cir. 2014); THE CHRISTIAN PROSTITUTE (2013); AMISHHOMO (2013); MORMON WHISKEY, (2012); KHORAN for wine, In re Lebanese Arak Corp., to name a few.
The Court proceeded to explain that the PTO deems that a disparaging mark is one that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” Geller, 751 F.3d at 1358 (alterations omitted). To determine if a mark is disparaging under § 2(a), PTO trademark attorney examiner will consider the useful meaning and elements of the proposed mark and it is used in the marketplace in relation with the related goods and services provided along with considering the presence of meaning as it may identify people, beliefs and national symbols or if it disparages a certain group.
Yet, despite this, the Federal Circuit Court deemed that aside from the disparaging aspect of the band’s name, the government’s practice was in essence viewpoint discrimination. Furthermore it stated “here, too, § 2(a) burdens some speakers and benefits others. And while it is true that a trademark owner may use its mark in commerce even without federal registration, it has been widely recognized that federal trademark registration bestows truly significant and financially valuable benefits upon mark-holders… “Denial of these benefits creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging.” “[I]t is clear that section 2(a) of the Lanham Act, by denying the valuable registration right to scandalous or disparaging trademarks, imposes a financial disincentive to the use of such marks in commercial communication.”
The Federal Circuit Court was not convinced by the PTO’s argument that granting of the trademark status to the Mr. Tam would constitute government speech in the rejecting of the disparaging trademark registration. All in all the Federal Circuit Court did not find that the government met its burden of demonstrating its legitimate interests to justify its seemingly unconstitutional practice as it has under Section 2(a) of the Lanham Act.
 Jeffrey Lefstin, Does the First Amendment Bar Cancellation of Redskins?, 52 Stan. L. Rev. 665, 678 (2000).