Federal Circuit Overturns Prohibition On "Disparaging" Trademarks (arstechnica.com)

New submitter flopsquad writes: On December 22, the Federal Circuit released a decision overturning, on First Amendment grounds, the part of US trademark law that prohibits registration of "disparaging" marks. This case concerned the USTPO's refusal to register a mark for the Asian-American band "The Slants". However, the decision will no doubt have wider implications for brands such as the embattled Washington Redskins, whose mark was ordered canceled earlier this year.

Comments

Doesn't anybody have a sense of humor these days??

[Anonymous Coward]

I think "The Slants" is a brilliant name!!!

Right decision.

[Weirsbaski]

It was the right decision- even jerks need to be allowed freedom of speech. (And I say that as one of the jerks :-) )

Re:Right decision.

[DaHat]

While I agree with you, SCOTUS probably won't given their previous ruling on offensive license plates.

Re:Right decision.

[ArmoredDragon]

Well you never know, they might overturn it. So what if somebody writes the word FUCK on their license plate? Maybe they're a pornstar and they want people to know it.

In fact I even think the FCC should drop its decency rules as well for the same reason. Does that mean we'll start seeing porn channels on the terrestrial channels? Well, no, given that cable channels don't do that, and they even filter out swear words when they aren't under any obligation to do either. But the reason the FCC decency rules should go the way of the dodo is because some really good shows like Game of Thrones could never be on the air.

Re:Right decision.

[Br00se]

They determined that license plates were government speech and that the government could restrict it. It's not like they outlawed offensive bumper stickers.

Besides, trademarks exist to benefit the public to prevent confusion in the marketplace. In theory. They should not be considered property, not even "intellectual property" in my opinion. They should exist only to prevent a 3rd party from taking advantage of the good (or bad) relationship between a mark holder and the public.

Re:Right decision.

[DaHat]

They should not be considered property

Except they are, which is why they can be bought and sold not unlike domain names... whoever gets there first gets to claim the name for themselves and has the state (or ICANN) help to enforce their exclusive use, and they are free to transfer it to someone else at a later time.

Re:Right decision.

[Br00se]

Yes, I don't deny that they are, however ownership is not absolute. It's why companies like Xerox have to fight to keep the term from becoming generic. Google Genericide. I wonder how long before Google becomes genericided.

Also, you can't sit on a Trademark the way you can sit on a domain name. You must use it in trade and protect it, or it can be considered abandoned in a little as three years (US). Too bad we don't have s similar limit for copyright.

Re:Right decision.

[Br00se]

Trademarks are a restriction on pretending to be someone else. If I have a business that becomes known by a certain name and I apply for protection for that name, it's protecting both my business and the public from someone trying to capitalize on the good (or bad) reputation I have established.

Re:Right decision.

[ArmoredDragon]

I wonder how long before Google becomes genericided.

That probably won't happen unless somebody else can own their own google domain name, which the use of the trademark makes explicit reference to. Since only one entity can own it, that's not likely to ever happen.

This is likewise why Microsoft is trying, rather unsuccessfully, to push people to say "bing it", which appears in in-show product placements, or "bing and decide", which appears in their commercials. They wouldn't do either if they felt they could ever lose the trademark.

Re:Right decision.

[Krishnoid]

Google Genericide. I wonder how long before Google becomes genericided.

Not long, thanks to genericidal maniacs like you.

Re:Right decision.

[PopeRatzo]

Do you think it's right that the government should be forced to spend millions of tax payer dollars to enforce someone's exclusive use of an offensive term?

Are you certain that the government should be forced to spend millions of tax payer dollars enforcing anybody's trademark? Or anybody's rounded corners? Or anybody's song that was written 80 years ago? Or anybody's patent on a button that you click to buy something?

Re:Right decision.

[Gavagai80]

License plates are different. The last thing we need is for license plates to shock other drivers or make them angry on the road, that's a public safety issue. And of course custom license plates are a luxury item sold by the state.

Re:Right decision.

[PopeRatzo]

Trademark is civil law - the police rarely get involved

All intellectual property is civil law. And the money government spends enforcing intellectual property is not generally on police, but on the civil legal system.

That includes the USPTO.

Re:Right decision.

[cpt kangarooski]

Except they are, which is why they can be bought and sold not unlike domain names.

No, not that freely. Just outright selling a trademark would be considered naked licensing, i.e. the transfer of the mark, without the reputation in the marketplace that the mark stands for. The result is that the mark is treated as having been abandoned, and that any previous junior users of the mark now have seniority over you if you want to reestablish protection.

To transfer a mark correctly is a lot of work, and takes a lot of time. It's generally part and parcel of the sale of the entire business that uses the mark, so that the reputation is preserved.

Re:Right decision.

[cpt kangarooski]

Holding a trademark is hardly sole ownership of a term. Even dilution doesn't stretch that far. But I agree that it should strictly be a civil matter if no fraud is involved.

Re:Right decision.

[Roger W Moore]

Too bad we don't have s similar limit for copyright.

You do only instead of having to fight and defend the trademark to keep it protected with copyright companies have to fight the copyright law to keep on extending it so it remains protected.

Re:Right decision.

[Anonymous Coward]

First, I agree with the SCOTUS ruling on vanity license plate content. This, however:

The last thing we need is for license plates to shock other drivers or make them angry on the road, that's a public safety issue.

Well, that's just shallow reasoning. If the public safety aspect of license plate content were sufficiently motivating, then that would argue for a similarly valid government interest in regulating the content of bumper stickers and similar adornments. Darwin fish are pretty offensive to a small, yet fervent, minority of Christians, but so far we have no good evidence of vehicular accidents caused by them.

If Jello Biafra's Dead Kennedys were still creating music these days, I could imagine a new compilation album entitled Give Me Safety Or Give Me Death. That would be entirely apropos to the contemporary drunk-on-fear zeitgeist, as well as bitingly paradoxical.

- T

Re:Right decision.

[Grishnakh]

Darwin fish are pretty offensive to a small, yet fervent, minority of Christians, but so far we have no good evidence of vehicular accidents caused by them.

If we did have good evidence of accidents caused by Darwin fish, that would mean we should enact tests to determine who's offended by them, and deny them drivers' licenses as they're a hazard on the road. The Darwin fish are an example of free speech, and it would be wrong to deny the fish-lover his right to adorn his car the way he wants because some other people are so upset by it that they cause an accident. Otherwise, by that logic, we could have laws requiring women to wear burqas some small, yet fervent, minority of men are "compelled" to rape women without them.

Re:Right decision.

[Grishnakh]

Don't be ridiculous. License plates are government property and therefore an example of government speech, so the government has every right to decide what it will and will not endorse. Texas would be absolutely right to ban a license plate saying "keep abortion illegal", just like it would be absolutely right to ban a license plate saying "ban abortion now". The government has no place sponsoring or endorsing any kind of political speech like that, and is right to stay out of it. And due to the political nature of the Confederate flag, the SCOTUS was also right to side with the state on that case too.

If you like the Confederate flag (and by extension, slavery) so much, there's no shortage of places selling bumper stickers with that flag. You can even paint your ugly car with that flag if you want. It may or may not affect whether a cop decides to give you a warning or a ticket, but it's your right to spout your idiotic views and adorn your vehicle however you want.

Re:Right decision.

[KGIII]

I once considered getting a car painted like the General Lee. Of course, it was an old Volvo and it would have been funnier than hell to see the looks on people's faces when they notice it is being driven by a long-hair with kind of dark skin. I'm also pretty sure that I'd have been shot. I didn't do it.

I did, however, once find that "DAVID" was available for a vanity plate and got that. That was one of the stupidest things I ever did. If you live in a semi-rural or rural area, do not get a vanity plate with your name on it, kids. Do not do it... I got in so much trouble with people. Why yes, yes I did drink back then.

Re:Right decision.

[Grishnakh]

Makes me wonder how you feel about the "Choose Life" plates then.

Whatever states issued that were in the wrong. It's a political and also religious topic and has no business on government-issued property, and makes it appear that those states are endorsing that position. How'd you like it if your state started issuing plates that said "Convert to Islam" (and there's no alternative plates advocating other religions)? Or how about special Scientology plates?

To be clear, the exact content was not a material question for the Supreme Court, just the ability of the state to determine its position.

Sounds like the SCOTUS make exactly the right position: the state has every right to refuse to endorse (or appear to endorse, by issuing special plates) any particular position. Smart states will refuse to issue plates for any kind of controversial topic.

Re:Doesn't anybody have a sense of humor these day

[Anonymous Coward]

No, now where was the required trigger warning before your problematic comment?

How is that band name "disparaging"?

[timrod]

I get that "slant-eyed" is a racist description of Asians, but there is absolutely nothing racist about the word "slant". Hell, it even mentions that the band is Asian-American.

Re:How is that band name "disparaging"?

[arth1]

I get that "slant-eyed" is a racist description of Asians, but there is absolutely nothing racist about the word "slant". Hell, it even mentions that the band is Asian-American.

This is likely the reason why it was rejected. In itself, it is not offensive, but in the context of Asians, it becomes so.
Much like Top Gear's "There's a slope on the bridge".

MInd, I'm not saying that rejecting the name was the right decision, but I believe the context was what mattered, not the word.
It's like an Indian-American band called themselves "Towel" - it might be considered derogatory by some non-band members.

Re:How is that band name "disparaging"?

[Krishnoid]

They should have been smarter about it -- start the band as non-asians, and swap out band members over the next year.

Re:How is that band name "disparaging"?

[AmiMoJo]

Words can't be inherently racist. Even "nigger" can be acceptable in some circumstances. It always comes down to context.

Re:How is that band name "disparaging"?

[tsotha]

But then the government could have canceled their trademark, the same way they did that of the Redskins.

Re:How is that band name "disparaging"?

[houghi]

The fact that they are or are not Asian-American should make a difference. e.g. many think that the band name N.W.A. could be a slur, where the band members themselves obviously think differently.

If you start with what you can or can not say because of your race, you are doing the thing you try to prevent. Remember that 'positive discrimination' is also discrimination with an adjective added to it.

Re:How is that band name "disparaging"?

[ebvwfbw]

Yea, call a nigger a nigger and see how far that gets you. Let me know, I'll come and sell popcorn.

Re: Doesn't anybody have a sense of humor these da

[Anonymous Coward]

You offend me and I would like to see you apologise unreservedly.

Re:No right not to be offended.

[arth1]

The word "slant" has a predominantly non-derogatory use. The word "nigger" doesn't.

If banning "slant", you have to be ready to ban a lot of other words that can be racist if put together with other words, including "red", "uncle", "wet", "porch", "towel" and probably hundreds of others.
Anyhow, that's my slant on things.

Re:So Can I not

[germansausage]

No, somebody already took that name - https://en.wikipedia.org/wiki/...

Re:Doesn't anybody have a sense of humor these day

[penguinoid]

I don't even know who "The Slants" is disparaging against. Also, who gets to decide what's disparaging or not? What if someone decides that words like "Christian" are disparaging?

Re:Doesn't anybody have a sense of humor these day

[phantomfive]

Also, who gets to decide what's disparaging or not?

Nobody anymore, according to the supreme court.

What if someone decides that words like "Christian" are disparaging?

That's why this is a good decision by the supreme court.

Re:Doesn't anybody have a sense of humor these day

[Tokolosh]

"If you stay here much longer, you will go home with slitty eyes." – Prince Philip, speaking to a British student during a trip to China in 1986.

How was "slants" disparaging?

[mark-t]

Obviously they don't think that it is anymore, but how was it ever?

Re:How was "slants" disparaging?

[TheGavster]

One of the interesting side effects of everything offending someone is that it actually produces a library of offensive terms for all time. The derisive meaning of "slant" was pretty much aged out, but now it's back, and written down to be used for generations to come.

Correction

[flopsquad]

... the USTPO's ...

Err... that's the United States Patent and Trademark Office, not the Undergraduate Student Toilet Paper Ombudsman. Though dealing with either one can be a pain in the ass. ;)

Re:Doesn't anybody have a sense of humor these day

[Mal-2]

First, this wasn't the Supreme Court, it was a District Court. If appealed, SCOTUS could hear it, send it back for reconsideration with comments, or let it stand.

Second, I'm surprised it has taken this long. Does this mean Los Chingaderos (the band) can now get some airplay? Will LMFAO ever be announced using their full name?

Re:Doesn't anybody have a sense of humor these day

[Krishnoid]

At least this guy does.

Re:Doesn't anybody have a sense of humor these day

[darkain]

It was specifically an issue with the United States Patent and Trademark Office. One of their primary sources cited for denying the trademark for "The Slants" is because of something posted in Urban Dictionary for the term "Slant" and because of their Asian heritage.

Re:So Can I not

[ArmoredDragon]

Hmm...The Spooks too: https://en.wikipedia.org/wiki/...

I guess it happens all the time.

Re:No right not to be offended.

[just another AC]

Anyhow, that's my slant on things.

RACIST!!!

Re:Doesn't anybody have a sense of humor these day

[ZeroConcept]

Awesome way to handle it, great video!

Re:Doesn't anybody have a sense of humor these day

[sconeu]

Actually, it's not a District court, it's a Circuit court. Specifically, it's the Court of Appeals for Federal Circuit, which has jurisdiction nationwide.

The only step above this is SCOTUS.

Re:No right not to be offended.

[kimvette]

> However I wonder how this would have gone if it were a hip-hop group calling themselves "The Niggers".

Google N.W.A.

Re:Doesn't anybody have a sense of humor these day

[davester666]

'Christian' is my fucking name, you worthless pile of shit. Yes, it is the name I demand people use whenever I'm fucking them.

Re:Doesn't anybody have a sense of humor these day

[AmiMoJo]

This doesn't affect rules for broadcast content.

Re:Doesn't anybody have a sense of humor these day

[tsotha]

Also, who gets to decide what's disparaging or not?

That right there is the problem. That's the road that ends with forty years in jail for insulting the king's dog.

Re:Doesn't anybody have a sense of humor these day

[Darinbob]

It's not disparaging, it's ironic. It's what this country was founded on; we were called Yankee Doodle as an insult and we threw it back at them.

Re:Doesn't anybody have a sense of humor these day

[Darinbob]

A brilliant stateman, Britain must be proud.

Re:Inferiority complex

[Darinbob]

I do not! My complexes are as superior as anyone else's!

Re:Doesn't anybody have a sense of humor these day

[Nidi62]

I don't even know who "The Slants" is disparaging against.

I remember reading a story a bout this a while ago. The band is made of members who are all Asian-American and is aplay off of the (somewhat outdated, at least I haven't heard it used in a long time) derogatory term "slant-eyed". Their whole argument at the time basically boiled down to "how can we disparage ourselves?".

Re:Doesn't anybody have a sense of humor these day

[Svartalf]

Heh. You'd be surprised. While it doesn't directly do that, it DOES set that most of the rules for content are unconstitutional.

Courts have been slow to appreciate the expressive power of trademarks. Words, even a single word can be powerful. Mr. Simon Shiao
Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our
society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and shouldbe stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft stigmatized communties. But
the First Amendment protects even hurtful speech.

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and
under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of 2(a) is unconstitutional.

Because the government has offered no legitimate interests justifying 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny
traditionally applied to regulation of the commercial aspects of speech.

The reasoning is immediately applicable to the content rules.

Re:Doesn't anybody have a sense of humor these day

[GungaDan]

Sure, but who needs a band called "the Slits" when we have Pussy Riot?

Careful with that Argument

[Roger W Moore]

The problem with that argument is that you can make it almost anywhere because it is always safer not to risk making people angry. For example in the US any member of the public might be carrying a gun and if they saw something which made them angry they might shoot someone. So you'd better not allow any signs anywhere which might offend someone. Then of course they might overhear something so better ban that type of speech as well and pretty soon you can kiss all your freedoms goodbye.

Re:Careful with that Argument

[Gavagai80]

When driving, any momentary distraction is potentially deadly -- that's not true in many other situations, perhaps when operating dangerous industrial equipment but that's about it. Of course, those evil distracting video billboards are a lot worse than an offensive license plate -- but they're not issued by the government for identification purposes so it takes a higher standard of evidence to remove them.

The Untrademarkables

[Roger W Moore]

But you could go for "The Untrademarkables".

Stupid

[rickb928]

One cannot 'disparage' themselves?

The Law, in this instance and others, is an ass.

Re:Doesn't anybody have a sense of humor these day

[Cajun Hell]

I want more of that guy in this world.

Re:Inferiority complex

[KGIII]

I wish my inferiority complex was as good as theirs. :(

Re:Doesn't anybody have a sense of humor these day

[fahrbot-bot]

I think "The Slants" is a brilliant name!!!

Ya, but it's a slippery slope ...

Re:Doesn't anybody have a sense of humor these day

[RockDoctor]

The trigger warning that YOU require is on the clue-by-four whose ballistic impact with your head was triggered by your use of the phrase "trigger warning."

Re: Doesn't anybody have a sense of humor these da

[cthulhu11]

What about the 90's band The Breeders?