The Slants, a Portland-based rock group, has officially been scheduled onto the Supreme Court docket on January 18th, 2017. The group has been in the midst of a 7 year legal battle to trademark the name “The Slants”, an application which the United States Patent and Trademark Office (USPTO) denied.

The USPTO, which grants all federal patents and trademarks in the US, denied The Slants’ application under Section 2(a) of the Lanham Act, which states that the USPTO can deny applications if they:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage … persons … or bring them into contempt, or disrepute.”

The Slants’ front man, Simon Tam, brought the suit alleging his First Amendment rights had been violated by the USPTO denying his group the trademark on the name which many consider to be a disparaging term to people of Asian descent.

Mr. Tam, who is himself of Asian descent and who bills the group as the “first all-Asian-American dance-rock band”, has said that he chose the controversial name because he wanted to make a statement about racial and cultural issue in the United States.

The case gained particular prominence earlier this year when the Washington Redskins, themselves mired in a high-profile trademark case, had their trademark invalidated by the USPTO under the same statute at issue in the Slants case.

The case, which is now known as Lee v. Tam, will have the Supreme Court consider the decision from the US Federal Circuit in favor of the Slants. The circuit court rendered the 9 to 3 decision on three arguments:

    1. “Strict Scrutiny Applies to § 2(a)”

There are limits to the First Amendment, but the government has to clear a very high bar in order to do so. The “strict scrutiny” test is applied to prove that the statute is serving a “compelling government interest” and that is “narrowly tailored” enough to achieve that interest and only that interest.

The government argued that the statute regulated the commercial aspects of the trademark, as opposed to the expressive aspects of the mark, an argument the circuit court rejected. The governmental regulation of commercial speech is typically subject to a lower “scrutiny test” and is much easier for the government to meet (although it is later stated in the opinion that the statute doesn’t even clear that test).

The government also argued that they did not explicitly ban the speech, but the circuit court rejected that, deciding the extent to which it did limit speech was essentially the same.

    1. “Trademark Registration Is Not Government Speech”

The second government argument that was refuted by the courts discusses the idea that by granting a government trademark, the government is implicitly endorsing the speech, making it government speech, which can be strictly self-regulated. They also argue that, since it is just the government speech aspect they are withholding, they are not limited Mr. Tam’s speech as they are still allowing his band to carry the name, just not lending it a “government subsidy”.

The argument, simply put, just equates the act of registering a trademark to other government permits and records, like driver’s licenses, parade permits, etc., which is not implicitly government speech.

    1. “Section 2(a) Is Not a Government Subsidy Exempt from Strict Scrutiny”

The government’s previous argument carries over into this reasoning, that the material benefits of a registered trademark are a subsidy from the government, and thus subject to its regulation and exempt from the scrutiny test.

The circuit court shies away from establishing the precedent agreeing with this argument would set. A registered trademark may provide “benefit-like” advantages, but not explicit benefits, and no court has yet expanded the definition of government benefit to these “benefit-like” advantages.

It’s more likely than not come June that the circuit court decision will be upheld by the Supreme Court. Once the strict scrutiny test is established, it is hard for a statute to pass that.

The potential decision is quite a far-reaching one though. Such a ruling would basically entirely invalidate Section 2(a) of the Lanham Act, a step the dissenting judges on the circuit court were hesitant to take. For one, an affirmation by the Supreme Court would essentially render the Washington Redskins’ case moot, since if the USPTO can’t deny a trademark under that section of the act they certainly cannot vacate an existing trademark, which is essentially the substantive difference between the two cases.

There are commercial implications of the decision as well. Although the decision is not being rendered legally on that basis, the reality is that owning the trademark holds the potential to be lucrative for the Slants. For any band, owning the trademark for your own name gives you protection in your own use and merchandising of the brand, as well as control over others’ activity related to the trademark.

One often cited example of how the act is inconsistently applied by the USPTO is the rap group N.W.A. The name is trademarked despite the fact that the name may be considered disparaging to African-Americans. N.W.A., by virtue of holding the trademark, likely makes a significant amount of money from merchandise containing the name and logo.

As for the First Amendment rights issue, sharp readers might have realized that, although Mr. Tam’s intent was to reclaim and bring attention to the racial and cultural legacy of the term “slants”, the decision by the circuit court does not narrow to exclude people who would seek to trademark terms in their original disparaging meaning.

The First Amendment is quite far reaching. By contrast, the German constitution was written with free speech limits particularly focused on neo-Nazi groups. Those kind of groups, however, are allowed to exist in the United States, as long as they don’t violate any other laws, like ones related to hate speech and crimes.

We live with the legacy of our founding fathers every day in our First Amendment rights. These rights seem likely to protect Mr. Tam and his band come June when Supreme Court traditionally hands down decisions. And, in fact, it is important to protect that speech and that trademark, for the Slants, and for musicians and artists across the country. It is important though, to consider the step that we may be poised to take, in the balance between free speech and protecting our own citizens.

Featured image courtesy of The Slants’ official website.

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