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  • Writer's pictureDenny Esford

Disparaging Trademarks – Are These Government Speech?

Football season is quickly approaching, and football fans have a lot on their minds. Who will they draft first in Fantasy Football? Should they get tickets to a home game? Who will make it to the Super Bowl? While these are some of the more prominent questions, another issue may be forefront in the minds of football fans who also follow intellectual property news. What will happen to the Washington Redskin’s trademark? In June, a Supreme Court decision gave a pretty clear hint as to whether or not we will be seeing the logo this year.

Redskins fans will likely start rejoicing – the Supreme Court heard a case with very similar issues, and held that a law denying the protection of disparaging trademark violates the First Amendment. But let’s back up to the beginning. The Washington Redskins have filed for, and received, a federally protected trademark in the past for their logo, which depicts a Native American. In 2014 the United States Patent and Trademark Office cancelled six of the team’s prior registrations on the grounds that the mark was disparaging to Native Americans. This sparked discussion across the country, and had lawyers and courts alike considering what made a mark disparaging, and whether or not it could receive trademark protection. Fast forward to June 2017,

The Supreme Court heard the case Matel v. Tam, which involved a band called The Slants. The Slants were denied a federal trademark because of a statute which prohibits the registration of trademarks that are considered disparaging—the term “slants” being disparaging of Asians. Tam and his band members argued that the name was not disparaging, that in fact, they were using the term to try to take back the phrase and rid it of its negative connotation. After their trademark application was denied, the band took their case to the U.S. Court of Appeals for the Federal Circuit, who found that the statute violated the First Amendment. The federal government appealed to the Supreme Court, who agreed with the Federal Circuit.

The decision was unanimous and centered around one main fact: trademarks are considered private speech, and not government speech simply by being registered with the government. Private speech is protected by the First Amendment and the judiciary holds the government to the its most burdensome test, a/k/a “strict scrutiny” when it tries to restrict that speech—in this case by denying registration to a disparaging word or short phrase. Strict scrutiny means that whatever constitutional right the government is trying to restrict, the government policy, statute or regulation must be “narrowly tailored” to address “a compelling government interest.” The standard is so high that the government usually loses, as it did here, when strict scrutiny is applied.

There are two less restrictive levels of judicial scrutiny. In holding that trademarks are private speech, the Court rejected the government’s assertion that trademarks are “commercial” speech and therefore entitled to so-called “intermediate scrutiny.” Under this middle level of judicial scrutiny, the government’s restriction must be “narrowly drawn” to advance “a substantial government interest” as opposed to a compelling one. The Court determined that denying registration to disparaging marks did not even meet this intermediate threshold.

The most deferential level of judicial scrutiny—where the government usually wins—is called the “rational basis test.” Here, the government’s position is presumed to valid and will not be invalidated by a Court unless the position is either “arbitrary or irrational.”

This ruling is huge when viewed with the knowledge that the government has historically not been consistent when dealing with disparaging marks. Some offensive marks were registered while others were denied. Now, however, this win for The Slants has the Redskins feeling very positive. With that all but decided, there is a new issue we can consider instead – how many marks will be submitted now that they cannot be denied for their disparaging nature? This may be a slippery slope.

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