Offense Intended: A Supreme Court decision extends trademark protection to “coarser” marks Offense Intended: A Supreme Court decision extends trademark protection to “coarser” marks
199     Offense Intended: A Supreme Court decision extends trademark protection to “coarser” marks

In July of 2012, an examiner in the federal Patent and Trademark Office (PTO) received an application for trademark registration relating to a device using distillation techniques to purify water. The name the inventor, Utahn Ron Francom, lightheartedly gave his distillery was “Mormon Whiskey,” and in filing his registration he hoped to enjoy the many protections a trademark registration affords the registered mark.

Francom was disappointed to learn, however, that his application was rejected, based on a set of federal statutes that prevent the PTO from extending the government’s imprimatur to marks that “disparage … or bring … into contempt or disrepute” any “persons, living or dead.”

Those statutes comprise what came to be known as the Disparagement Clause.

Meanwhile, three weeks after the ill-fated application for Mormon Whiskey, the same PTO received and ultimately accepted an application to register the mark Mormon Christian.

“In the case of Mormon Christian, the examiner was fine with that because it was seen as a positive statement not a negative one,” says trademark attorney Nicole Deforge of Fabian Vancott. “And then, they denied the application for Mormon Whiskey because they thought it would be offensive.”

The Mormon Whiskey versus Mormon Christian dichotomy would go on to serve as a canonical example of the problematic nature of the trademark office’s invocation of the Disparagement Clause, and was cited in many high-profile critiques of it.

“There are rules and regulations preventing granting trademarks to immoral or scandalous subject matter, and these have historically been used by the trademark office to prevent not necessarily the use of a mark, but the granting of federal rights associated with marks that are deemed pejorative or obscene,” explains Jed Hansen, a trademark attorney at Thorpe North & Western. “The rule was interpreted as applying to marks containing subject matter that is derogatory or profane, or that convention would say is offensive.”

Nonetheless, in recent years, popular opposition to the government’s use of the Disparagement Clause began to grow, though the arguments against it largely centered on market freedom.

In 2010, a dance-rock music band called The Slants applied to register their mark and they, too, were rejected. The basis? The term “slant” can be used to disparage persons of Asian descent. Complicating matters: the band’s members are all of Asian descent.

“This is what The Slants were saying: They said this term is a pejorative and one reason we want to associate it with our music is to change the narrative,” says James McConkie III of Workman Nydegger.

With that, the argument against the constitutionality of the Disparagement Clause acquired a First Amendment component, making it particularly well-suited to a judicial challenge. The outcome was a rare unanimous decision in The Slants’ favor.

“The justices found the language of the [Disparagement Clause] was overly broad and really swept in a lot of marks that should be considered private speech,” says Deforge. “I think it was the correct ruling. This kind of double standard was of concern to the Supreme Court because here the trademark office was saying we need to be content neutral and not approve any offensive statements. And yet by allowing registration of positive statements, they were appearing to endorse anything that’s positively stated about a group. And you can’t have that. Simply registering a mark should not be an endorsement of speech.”

Government or private speech?

Understanding the nature of the case requires first understanding that constitutional law assigns different First Amendment protections to different kinds of speech; in the case of The Slants, the distinction is drawn between government speech and private or commercial speech.

The PTO has argued that the act of granting trademark registrations amounts to government speech, which can be used selectively when endorsing the speech of individuals or businesses. Among the case law used to support this contention is a 2009 Supreme Court decision with local ties: Pleasant Grove City vs. Summum, in which the court ruled in favor of Utah County’s Pleasant Grove City choosing to accept and publicly display privately donated monuments of one religious group and not another, since such endorsements are government speech.

While recognizing the difference between government and private speech, the court rejected the claim that trademark registrations amounted to the former.

“The Slants case is really a recognition of a business owner’s right to exercise his or her free speech, to make decisions about their marks, and that just because you put a mark on a national register, which is what happens when you apply for trademark registration, it doesn’t all of a sudden become government speech,” says McConkie.

In its decision, handed down last summer, the court went a step further:

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 … It is thus farfetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently. And none of this Court’s government-speech cases supports the idea that registered trademarks are government speech.  

Of particular interest to court observers is the fact that the decision was unanimous. McConkie thinks this is a result of the multifaceted nature of The Slants argument.

“Both sides see constitutional principles that appeal to each. On the right, it’s a free markets decision. You’re saying rather than let the government be the arbiter of what’s appropriate for a particular product, we’re going to let the market make that decision,” McConkie says. “Then you’ve got the First Amendment that pulls the rest of the justices on the left along because of the long-standing idea that people should be able to allow their ideas to move forward in the marketplace. The combination brings all the justices together.”

Jed Hansen finds the decision most interesting for its acknowledgement of the interplay between government and market behavior.

“From a general trademark perspective, usually that’s just governed by market principles and market behavior. Consumers will respond and react, and trademarks grow in value and decrease over time in response,” Hansen says. “Whether it’s the government’s role in regulating or granting the extension of rights that a certain [presidential] administration might consider to be offensive or inflammatory might vary from administration to administration and the court here is saying that in this particular instance it didn’t pass the constitutional scrutiny that it needs to pass.”

A second look

In the wake of The Slants decision, many previously rejected applications are beginning to be resubmitted, though Hansen doesn’t think this will move any grocery store aisles from a PG to an R rating.

“We’re already seeing a lot of trademark applications now that are a bit more coarse,” Hansen says with a laugh. “But those marks were already being used in commerce, to the extent that other laws didn’t prohibit them. So all this decision does is allow the person already using that mark to get the benefits of statutory protection.”

Among those filings on the coarser side is the application—originally rebuffed in 2011 as “scandalous”—for Salt Lake-based Joseph Daniels Pharmaceuticals’ product Pedro’s Lip Schit Lip Balm, which was re-submitted just eight days after The Slants decision.

So, too, will Ron Francom shortly be re-submitting an application to register Mormon Whiskey.

The Slants decision is affecting more intellectual property practices than one might imagine.

“If all you do is work for Nestle, I doubt you’d ever encounter this issue, since they already have a brand they’re selling to consumers,” says Hansen. “When you have a diverse practice with a lot of different clients large and small, you’ll face a whole range of trademark issues. We’ve faced it several times and we’re just a small Utah firm.”

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