Should the federal government have the authority to deny legal protection to trademarks and service marks it finds offensive? The debate is one that the U.S. Supreme Court has avoided for decades. But recently, in a case called Lee v. Tam, the justices heard argument on the question. Let's hope they come out in favor of the First Amendment.
Lee v. Tam involves the Slants, a dance-rock band from the Portland, Ore., area. All the members are Asian American. In 2011 the group filed an application to register its name as a mark. The application was denied on the ground that "Slants" would be offensive to large numbers of Asian Americans. The Trademark Trial and Appeal Board upheld the refusal, but the U.S. Court of Appeals for the Federal Circuit reversed the decision.
The judges did not dispute that the mark was offensive. Instead, they ruled that the prohibition on federal registration of disparaging marks violates the First Amendment. Trademarks are a form of expressive speech, the panel wrote, and the government cannot penalize speech because it happens to dislike the message.
It's plain that the band sees its name as a message. Founder Simon Shiao Tam has explained that by naming his band the Slants, he was attempting a "reappropriation," by which a group seizes control of a disparaging word or phrase, and converts it to a term of pride. Said Tam: "We want to take on these stereotypes that people have about us, like the slanted eyes, and own them."
The Patent and Trademark Office has developed a special test for a proposed mark that "is found to refer to identifiable persons, institutions, beliefs or national symbols." Registration will be denied when the mark's meaning "may be disparaging to a substantial composite of the referenced group." The best-known example of the struggle over how to apply this test is the continuing litigation over the registration of marks owned by the Washington Redskins.
The ban on registration of offensive marks is largely a relic of the years after World War II, when it was just one among many rules that the U.S. developed to enforce a certain public moral hegemony. Many libraries refused to carry Invisible Man and The Catcher in the Rye.
It's time for a change. We live in a different world now, one in which the protection of speech has become considerably more robust. True, we also live in a world in which advocacy of censoring the offensive has become depressingly popular, especially on the left. What's striking about Lee v. Tam is how different the support has been from the litigation challenging the Redskins trademark, where much of the left has been siding with the mark's rejection.
Some supporters of the band, struggling to thread the identity politics needle, have argued that registration of an otherwise offensive term for an ethnic group should be permitted when the mark is used by members of the group. Under this theory, only outsiders should be unable to register the mark. This approach would suggest, for example, that the Redskins mark would be fine if used by a Native American team. (And some Native American teams do use it.) But it's not at all an attractive solution. The last thing we need is a Patent and Trademark Office that sorts applications according to the race or ethnicity of the applicant.
We're better off facing squarely the First Amendment issue raised by Tam's "reappropriation": Should the federal government have the authority to deny the privileges that come with registration because it dislikes the message a mark expresses? Our answer should be a resounding no.
Stephen L. Carter is a professor of law at Yale University.
Editorial on 01/29/2017