‘The Slants’ and a challenge to trademark law

by Angela Grayson (angela.grayson@precipiceip.com) 224 views 

It would hardly come as a surprise that most businesses wish to stand out in some way. Some businesses choose to stand out through a superior customer experience, while others choose to stand out through superior product offerings.

However, some companies also choose to brand themselves in a manner that begs to be noticed, and will choose a business, product or service brand name that can be downright shocking.

By and large, businesses have the freedom to operate under any brand name so desired. There is very little regulation about acceptable brand names companies may adopt. However, if a company wishes to register the brand name with the U.S. Patent and Trademark Office (USPTO), there are a number of rules that must be followed in order for the brand to become a registered trademark. Namely, the proposed mark shall not consist or comprise of “immoral … or scandalous matter …”

Attorneys have been counseling clients against the hazards of attempting to register immoral or scandalous marks with the USPTO for years. In fact, the provision dates back to the original legislation in 1905, and a ban on disparaging marks can be traced back to the 1945 legislation.

Both provisions have endured with little fanfare or challenge — but now, that’s all changed. An Asian-American rock band called “The Slants” has challenged the constitutionality of this provision of the Trademark Act, and the U.S. Supreme Court will decide the case this term. For readers not current on racial slang, “slants” is a rather derogatory term for someone of Asian descent.

Image from latest song released by The Slants.

Although the immorality, scandalous and disparagement provisions have existed for years, the USPTO has not been consistent in how it interprets and applies this rule — namely because human beings examine trademark applications and humans are subjective. If one were to scan the Trademark register, one would find numerous marks registered of questionable “morality,” because “morality” is in the eye of the beholder.

A good example of this is the Washington Redskins mark. The mark has been used more than 80 years and had been on the USPTO Register much of that time. But in the early 2000s, the mark was challenged on grounds that it was disparaging to Native Americans, and was recently ordered canceled. I recall my early days as a patent examiner at the USPTO. My fellow colleagues and I would routinely start our day arguing about the latest political story to appear in The Washington Post. The Redskins controversy was just beginning to brew, and we would spend hours debating the merits and fairness of the case. The issue is clear as day for some, but for others, the issue remains unfair, perplexing and complicated.

Fast forward to 2017. The Slants wants to register the mark as the name of their rock band. The Slants was used as an unregistered mark by the band years prior, and the band wished to obtain the benefits that a USPTO registered mark could provide. The USPTO trademark examiner refused to register the mark on the grounds that the mark was immoral, scandalous or disparaging. The band challenged the decision on constitutional grounds that the refusal violated the band’s freedom of speech.

This case was open and shut, until it wasn’t.

The U.S. Supreme Court will likely provide one of two outcomes — keep the status quo or invalidate more than 100 years of statutory law.

By all accounts, this case is one of the most closely watched cases in intellectual property at the moment. If the U.S. Supreme Court decides to invalidate the immorality, scandalous and disparagement provision of the Trademark Act, we could see new opportunities for branding businesses, products and services that will most certainly make you take notice.

Editor’s note: Angela Grayson is the principal and founder of Precipice IP, a legal firm in Bentonville. She is a registered patent attorney and is admitted to the U.S. Supreme Court Bar. The opinions expressed are those of the author.