For over a century the United States Patents and Trademark Office (USPTO) has been rejecting applications for trademarks which it considered to be offensive. When denying these trademarks, USPTO relied on the Trademark Act which states a trademark will be denied if the mark “may disparage or falsely suggest a connection with persons, living, or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
This was all changed by Simon Tam, the lead singer for an all Asian-American band called The Slants. After seven years of battling the legal system, Tam was finally able to Trademark the group’s name while also fighting for a right that is considered the most fundament American right, free speech.
The Court now holds that the disparaging provision of the Lanham Act violates free speech because speech may not be banned on the ground that it expresses ideas that offend. This change does not only help The Slants to trademark their name, Sports teams like the NFL’s Redskins, MLB’s Indians, and the TV show “Queer Eye for the Straight Guy,” will now be able to trademark their names. Justice Alito reasons, “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”
Does this mean that any word or phrase can be trademarked? The answer is NO!
Even though the portions of the Trademark Manual of Examining Procedure that relates specifically to examination under the disparagement provision no longer apply, the application for trademarks still must meet the scandalousness provision. The scandalousness provision bars the registration of immoral or scandalous matter. The constitutionality of the scandalousness provision remains pending before the Federal Circuit in In re Brunetti. Until this case is heard, a trademark still must meet this standard.