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Trademarking in the Offensive?

A recent landmark United States Supreme Court decision involving trademark law has brought a stream of curious applications, raising national concerns.

Photo: Members of "The Slants." National Review, (Courtesy of Google Images)

Derogatory terms have been indoctrinated into society for as long as many can remember.  These terms and phrases have hurt, encouraged violence, and hindered society’s progress towards total equality.  Recent United States Supreme Court case law has potentially changed the landscape of these words being used for commercial purposes.  The United States Patent and Trademark Office has received several applications from individuals and companies trying to trademark a variation of the “N–word.”  This variation is a colloquial usage that is commonly used amongst the black community.  The initial idea sounds offensive, but it is interesting in that the purpose of this attempt to trademark the word may have noble intentions.  In addition, the U.S. Patent and Trademark Office has also received applications attempting to trademark the swastika, a symbol of Nazi Germany during World War II.

[T]hese applications come on the heels of the Supreme Court’s decision in Matal v. Tam.

Curtis Bordenave is a Mississippi man who has applied to trademark the variation of the N-word.  He is a consultant that helps businesses brand themselves.  In 2008, his application for a similar use of the “N–word” was denied by the patent office, but that was prior to the Supreme Court’s decision in Matal v. Tam.  Now, Bordenave hopes to use the word’s well–known history to bring “power to control the censorship of this word in commerce.”  He has already created t–shirts with the word branded inside the tag while the front reads “Every Shade Every Gender Unite.”  Bordenave believes “when we define the word clearly, and we give it a powerful strong message…then you put it on the shirt, we want people to think about the message.”

The other group of individuals applying for the trademark is Snowflake Enterprises, which is spearheaded by a Virginia man named Steven Maynard.  He is trying to trademark the swastika in hopes of turning the offensive connotation of the symbol from “hate into hope.”  This company was created by Maynard and other investors after the Tam ruling.  Maynard believes that “by saturating the market with these epithets, [society] can rob them of racist connotations.” Interestingly, he hopes to charge people so much for merchandise with the symbol on it that no one will ever buy it;  however, this presents a possible issue in that an entity must show that consumers will connect a particular trademark to the maker of that product.  It should be noted that these applications come on the heels of the Supreme Court’s decision in Tam.  Bordenave filed his two applications on June 19, 2017, the day of the Court’s decision, while Snowflake Enterprises filed their applications the following day.

The case began when an all Asian–American dance–rock band called “The Slants” applied to trademark their band name and were denied on the basis of the term’s derogatory nature, which refers to the shape of Asian people’s eyes.  The members of the group argued morally that their usage of the term for the band’s name will reclaim the term and remove its denigrating force. Legally, they argued that their First Amendment rights were being infringed upon.  The suit challenged a specific clause of the Lanham Act referred to as the the disparagement clause.

The Lanham Act is the current federal trademark law that was enacted in 1946.  This is the second uniform set of statutory rules governing the policies and procedures of trademark law.  The Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.

The provision at issue for the Supreme Court was the disparagement clause which prohibited the registration of a trademark that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

Once an application for a trademark is federally approved, it is placed on the principal register.  Currently, the Act has provisions that keep certain trademarks from being federally registered.  The provision at issue for the Supreme Court was the disparagement clause which prohibited the registration of a trademark that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The Government advanced arguments that would potentially eliminate First Amendment protection altogether or allow the provision to be scrutinized against rational–basis review, which is the least strict of the Court’s scrutiny tests for First Amendment rights.  The Government initially argued that trademarks are government speech and not private. The Court rejected this argument by noting that if trademarks were government speech, then the Government would be endorsing speech incoherent for a government entity to support, such as Nike’s “Just Do It” or Burger King’s “Have It Your Way.”

The Government then suggested that past Supreme Court case law has upheld the constitutionality of government programs that subsidized speech expressing a particular viewpoint.  This argument was rejected as well on the basis that the case law the Government was relying on involved cash subsidies whereas here no cash subsidy was present.  Additionally, the Government was unable to prove how having a federally registered trademark represented a subsidized benefit to the owner of the trademark.

The Government also tried to argue that the disparagement clause should be saved under a new doctrine called the “government–program,” which the Court explained is a hybrid of the Government’s first two arguments with the addition of an element involving a public employer’s collection of union dues from its employees.   It went on further to reason that the cases the Government posited in this instance are no more relevant than the cases argued in the “government program’s subsidy” argument. The Court further noted that this new doctrine is a very specific area of First Amendment case law that is far removed from the registration of trademarks.

In its continued attempt to rescue the disparagement clause, the Government asserted that the disparagement clause served two interests and, because of this, trademarks are commercial speech and should be subject to relaxed scrutiny.  The first interest was preventing minority groups from being flooded with demeaning messages in commercial advertising, and the second was protecting the orderly flow of commerce.  The Court quickly struck these arguments down by noting the Court’s long-standing jurisprudence that “the [Court] protect[s] the freedom to express ‘the thought that we hate.’”

In regards to the “orderly flow of commerce” argument, the Court found the disparagement clause was too narrowly drawn while also being too broad to satisfy this second interest.  The clause was too narrow because it encompassed any trademark that disparages any person, group, or institution, which went too far to serve the interest asserted.  The clause was found to be too broad in that it protected every person living or dead as well as every institution.  This would protect a deceased individual, such as President James Buchanan, from being called a “disastrous President,” because if someone applied for this trademark, the government could claim the phrase might disrupt commerce.

Ultimately, the arguments relating to these two interests, as well as other speech–related arguments, were struck down by the Court, leading to the decision that the disparagement clause violated the First Amendment. This effectively meant “The Slants” won the ability to trademark their band name.

Now, other potentially offensive terms, phrases, and symbols like the “N–word” and the swastika may soon find the same good fortune with the U.S. Patent and Trademark Office.  There are still pitfalls these applications face, however.  With the disparagement clause no longer applicable, it will be interesting to see not only how the Trademark Office addresses these applications given the Court’s new precedence, but also how Congress will respond to the invalidation of a clause that hindered offensive speech in the commercial industry for over half a decade.  Furthermore, there is something to be said that if these applications are accepted and placed on the principal register, a commercial entity will be making a potential profit off of offensive rhetoric.  Neither group of trademark applicants has said exactly what will be done with the revenue.

Tommy Harvey III
About Tommy Harvey III (10 Articles)
Tommy Harvey III is a third year law student and serves as an Associate Editor for the Campbell Law Observer. He is originally from Atlanta, GA and received his undergraduate degree from the University of Miami. Tommy has worked for the United States Attorney’s Office, Eastern District of North Carolina and the Mecklenburg County District Attorney’s Office in Charlotte, NC. His legal interests include Civil Rights Law, Constitutional Law, and International Law. Tommy is a member of the Campbell Law Trial Team, and serves as a peer mentor as well as the current Vice President and past Treasurer for the Campbell Law Black Law Students Association.