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Curbs on Disparaging Trademarks Questioned at Top U.S. Court

Updated on
  • Justices weigh case involving Asian-American band The Slants
  • Supreme Court case could affect Washington Redskins name fight

A skeptical U.S. Supreme Court questioned the constitutionality of a 70-year-old provision that lets the federal government withhold some legal protections for trademarks that officials conclude are disparaging.

Hearing arguments in a case involving an Asian-American band called The Slants, justices from across the court’s ideological spectrum wondered whether the government can constitutionally give preferential treatment based on the message sent by a trademarked name. The case could affect the outcome of a similar dispute over professional football’s Washington Redskins.

"I can say good things about something, but I can’t say bad things about something," Justice Elena Kagan said. "And I would have thought that that was a fairly classic case of viewpoint discrimination."

The hour-long session didn’t give a definitive indication of the case’s outcome, as the justices struggled to find a way to limit the implications of a ruling against the government in non-trademark contexts. 

Even so, the court as a whole suggested it was more likely than not to invalidate the disparagement provision. Justice Anthony Kennedy scoffed when Justice Department lawyer Malcolm Stewart said a public university could bar racial epithets or personal attacks in a room set aside for students to post messages.

"So the government is the omnipresent schoolteacher?" Kennedy asked. "I mean, is that what you are saying?”

The Slants’ founder and bass player, Simon Shiao Tam, says the band’s name is designed to reclaim a term that has long been an anti-Asian slur. The U.S. Patent and Trademark Office nonetheless refused to put the trademark on a federal registry after concluding the name was disparaging to a substantial number of people of Asian ancestry.

Federal registration gives added legal protections to trademark owners and can help them win lawsuits. The benefits include exclusive rights in parts of the country where no one had previously been using the name or image. Registration also puts would-be competitors on notice that a trademark is legally protected.

In the Redskins case, a federal judge last year canceled the federal registration for the team’s trademarks, ruling that the name disparages Native Americans.

Stewart, representing the Obama administration’s position, argued that, even without the band’s name on the registry, it can still use the name and can invoke separate trademark protections available under state law. The administration says federal registration is a government benefit that provides additional protections but doesn’t have to be conferred on all applicants.

The disparagement provision "places a reasonable limit on access to a government program rather than a restriction on speech," Stewart said.

Tam’s lawyer, John Connell, pressed sweeping arguments that at times Wednesday got him into trouble. At one point he agreed with Kennedy that trademark law "is just like a public park," where speakers get broad constitutional protections. 

A few minutes later, Connell had to back off that contention after Kagan read off a list of reasons -- such as the likelihood of confusion or the use of a government insignia -- why a trademark-registration application can be denied.

"Those would not survive in a public park," Kagan said.

"Agreed," Connell answered.

Nor was it clear Connell satisfied Justice John Roberts, who asked why the lawyer’s position wouldn’t prevent the government from sponsoring a Shakespeare festival where all the presentations praised the prolific author. And Justice Stephen Breyer was taken aback when Connell said the government couldn’t prevent a trademark from saying "Smith’s beer is poison."

"Oh, my goodness," Breyer said. "I mean, there are laws all over the place that stop you from saying that a competitor has bad products. It’s called product disparagement."

The court will rule by June in the case, Lee v. Tam, 15-1293.

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