June 22, 2017
In an age where political correctness is seen as a vice, we can now trademark ethnic and racial slurs
by Peter Clark
Every year, about 250,000 new trademark applications are filed in the United States. The companies, entrepreneurs, and occasional cranks that seek registration tell a story beyond just a celebrity name (Liv’s Lips®?) or sexy marketing potential (Finger Marie® cookies?). Companies know that the name comes to be the thing we crave almost as much as the product itself. When we want a soda, we’ll say we want a Coke®… even when sometimes we want a Mountain Dew®… even when what we really want is the hillbilly moonshine that was colloquially called mountain dew before the name was appropriated by Barney and Ally Hartman to sell a lemon-lime drink as a whiskey chaser. And still, after writing all that, I now would really just like a Coke®. Damn you, marketing gods and your mind-manipulating powers!
Speaking of which. On Monday, the Supreme Court ruled that a portion of the Lanham Act, a complex piece of trademark legislation from 1946, was unconstitutional — specifically, that the law’s so-called “disparagement clause” violated the free speech protections of the First Amendment. The clause in question prohibits trademarks “which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The lawsuit was brought by Simon Tam, lead singer of a Portland-based band called The Slants, who describe themselves as “the first and only all-Asian American dance rock band in the world.” Tam has been attempting to trademark the band’s name since 2010.
The decision has many implications, including for the long-running argument over a trademark for the Washington Redskins. As Michael McCann writes at Sports Illustrated:
The Slants ruling is very significant for the Redskins, whose federal trademark the PTO [Patent and Trademark Office] has scheduled for cancellation. To date, the Redskins have unsuccessfully challenged the scheduled cancellation in court. In 2015, U.S. District Judge Gerald Bruce Lee affirmed the PTO’s scheduled cancellation of the Redskins’ trademark on grounds it disparages Native Americans because of the historical meaning of “Redskins” as a derogatory term. The Redskins have appealed Judge Lee’s ruling to the U.S. Court of Appeals for the Fourth Circuit.
To be clear, the cancellation of the Redskins trademark has never gone into effect. Under federal law, that only happens after the Redskins unsuccessfully exhaust all of their appeals.
As a consequence, the Redskins have maintained all of the benefits of federal trademark registration during the controversy. Those benefits include the exclusive right to use the mark in connection with specific goods and services, and a legal presumption of ownership. Further, trademark registration empowers the Redskins to work closely with U.S. Customs and Border Protection on preventing counterfeit Redskins goods from entering the United States. In the sports world, protection against counterfeit apparel and imitation merchandise is of enormous value. Trademark protection also authorizes courts to impose treble damages—which means damages automatically multiplied by three—on defendants who violate a trademark holder’s rights. The possibility of treble damages is often a powerful deterrent from a company committing an unlawful practice under trademark law.
In the decision, written by Justice Samuel Alito, the court points out that although they’re certified by the government, trademarks are themselves a form of private speech. And because of that, “this Court exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”
Although government overreach is a valid concern, it’s hard to ignore the moral hazard in allowing a private citizen to give their product a name with the potential to degrade, dehumanize, or delegitimize any ethnic group. And it’s hard to imagine a profit-hungry body like the NFL voluntarily censoring a team name. Needless to say, this is something for all of us to keep a close eye on.
And look, here’s a music video from the Slants (trademark pending).
Peter Clark is the sales manager at Melville House.