The Slants’ Free Speech Victory Changes The Legal Landscape For Trademarks

Monday, November 13th, 2017 @ 5:09PM

It finally happened.

In Matal v. Tam, the Supreme Court handed down a long-awaited decision on a major trademark case, and opened the floodgates for a lot more trademarks to be registered.

In Matal, the defendant was the leader of an Asian-American band called The Slants. The word “slants” is a derogatory way to describe Asian-Americans. Yet Tam and his bandmates decided to re-appropriate the term, wearing it as a badge of pride.

There’s no question Tam and his bandmates can choose whatever name they want. However, while anyone can name their service or product freely, the chosen name may not necessarily qualify for trademark registration with the United States Patent and Trademark Office (“USPTO”). Thus, even with a legally permissible name, some would-be registrants end up unable to enjoy the legal benefits and protections that registration provides.

Which is exactly what happened with The Slants: the USPTO denied their application. Why?

Among its other duties, the USPTO administers the Lanham Act, the federal law which governs all trademarks. The Lanham Act contains a provision which states that registration shall be refused for trademarks that are disparaging (or that meet a few other specified conditions).

The Slants say they don’t use the word in a negative manner. After all, they’re talking about themselves. Instead, they’re using their name (along with some of their song lyrics) to draw attention to racial issues.

No matter. Because “slants” is widely viewed as disparaging, the USPTO denied the band’s request for registration in accordance with the statute. The band sued in response, citing the government’s violation of their free speech rights.

While the case was working its way through the courts, a similar issue came about involving the Washington Redskins. In contrast to The Slants, The Redskins’ marks had already been registered. Yet over the years, numerous Native American groups have sued over the NFL team’s name, citing its derogatory connotations. In the course of one of those suits, the USPTO cancelled the Redskins’ registrations under the Lanham Act’s anti-disparagement clause.

The team has been embroiled in the appeals process since then. When it became clear that The Slants’ case would be heard first, the Redskins requested the Supreme Court hear their case at the same time, due to the similarities. But the Court denied the request and scheduled only the Matal case on its docket. (Maybe they knew their decision on that case would resolve the Redskins case without their having to directly intervene.)

In the end, it was a unanimous decision. The Slants won, and the ban on disparaging trademarks was struck down. As Justice Alito wrote for the majority, “If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.” (Justices Kennedy and Thomas wrote concurring opinions.)

As for the Redskins, the plaintiffs realized that the Matal ruling left them with little basis to proceed with their suit. They dropped their case against the football team days after the ruling. The Redskins’ trademark registrations will remain in effect.

Yet many still feel that regardless of the Matal case outcome, the Redskins’ marks should stay cancelled. For his part, Tam himself says the team should change its name. “Just because something is permissible, it doesn’t mean it’s the right thing,” the Slants’ frontman said.

Whether or not that will happen, there’s likely to be an uptick in the number of applications received by the USPTO, as many marks that were previously denied might now be eligible for registration. And with more businesses being able to protect their intellectual property, those assets may become more valuable.

Are you thinking about registering a trademark? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Call us at (561) 953-9300 or contact us to schedule your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

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