Trademark News & Screw-ups In Ruling That May Impact ‘Redskins’ Controversy, SCOTUS Won’t Ban Offensive Trademark

This is the decision that a lot of people were waiting for. I was hoping for it. A huge victory for free speech and trademark rights. In a way, Obama administration's attack against Redskins' trademarks provided a perfect example of the government usurping free speech and depriving a football team with a long history of one of their most valuable assets, their brand. In case you haven't heard, just before the USPTO Trademark Trial and Appeal Board voted to cancel six trademarks owned by Redskins in 2014, President Obama in an interview said, "If I were the owner of the team and I knew that there was a name of my team — even if it had a storied history — that was offending a sizeable group of people, I’d think about changing it." Whether TTAB's decision was made with a view to Obama's words is secondary. What matters is that it could have created a dangerous precedent when the government could destroy your property, just because they didn't like your message. Because of the procedural status, Redskins' trademarks were not the ones that the U.S. Supreme Court looked at in the Slants case, but everyone knew that its decision would create a precedent that would either allow Redskins to regain their trademarks or whether it would open the door to mass-expropriation of intellectual property by the government. In the Slants case, a band sought the court's opinion that just because some may find the word "slants" offensive, it should not bar the music band with that name from registering it as a trademark. The case was more about free speech than it was about trademarks. Remarkably, the Supreme Court found that free speech trumps the government's desire to suppress it. Duh! Justice Alito's words provide a good insight on the dynamics of this case: "...it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things... It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public... For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike), or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”?" So yes, Slants will be able to get their trademarks registered. Redskins will probably be able to get their trademark registrations restored. Two other questions arise in this regard, however. First question is whether the decision of the Supreme Court would also do away with prohibition on registration of "immoral or scandalous matter"? The Slants case dealt with "matter that may disparage... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." The Federal Court whose decision the Supreme Court affirmed found that "the disparagement proscription of [§1052(a) of the Trademarks Act] is unconstitutional. However, there are other proscriptions in §1052(a) of the Trademarks Act, namely a proscription against registration of immoral, deceptive, or scandalous matter. USPTO routinely denies registration of swear words as trademarks. In theory, the reasoning behind "scandalous and immoral" prescription is exactly the same, the government making a value judgement about the merits of the message, which was just found unconstitutional. On the other hand, the courts' decisions only deals with a very narrow (although hugely important) provision. Looks like the decision of the Supreme Court should open the door to registration of a whole bunch of four-letter-worded trademarks. The real question is whether USPTO will require someone to try their case in court again. Second question is whether the decision of the Supreme Court would also open the door to registration of marijuana brands on the Federal level. Currently, because marijuana is not legalized federally in the U.S., USPTO refuses to register trademarks that have anything to do with what can be a federal crime. Granted, this issue is separate, but it's a huge problem now that marijuana is legalized—and is becoming a massive industry—in several American states, while the players cannot properly secure that which allows their consumers to tell one brand from the other. It would be very interesting to see what influence this Supreme Court decision will have over the development of trademark laws in the U.S.

The video below features Andrei Mincov's commentary of this article.

THINKING OF TRADEMARKING YOU BRAND?

DISCOVER MODE

Pick from the topics below or use our search system.

And make sure you subscribe to our YouTube channel for more free educational content.

Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.