In 1946, the US Patent and Trademark Office (USPTO) drafted something called the ‘disparagement clause’, which sought to prevent the filing of any trademark which could be deemed as “immoral, deceptive or scandalous”. In the past, this has usually been reserved for extreme cases where the trademarks have been intended to incite hate or discrimination among particular demographics.
However, it was this clause that was cited by USPTO in what was set to be a standard trademark case involving a band named The Slants. From a general perspective, there’s absolutely nothing controversial or scandalous about the name ‘The Slants’, but after considering the context of the name — the band consists of five Asian-Americans — USPTO decided to refuse its trademark application on the basis that the name is highly disparaging to the Asian-American community.
Unsurprisingly, the band is less than pleased with the issue. Speaking after the decision, bass player and frontman of The Slants, Simon Tam, explained that he was fully aware of the negative connotations of the name — in fact, that’s the exact reason the members chose it. But instead of offending people, the band wanted to “re-appropriate [the phrase] into something positive and empowering”. Unfortunately, government authorities didn’t see things quite the same way.
The American football team Washington Redskins was handed a similar fate back in 2014, when USPTO revoked its trademark after Native Americans claimed it was offensive. According to a statement following the decision, USPTO said that “the term ‘Redskins’ was disparaging of Native Americans, when used in relation to professional football services, at the times the various registrations involved in the cancellation proceeding were issued.”
However, while the team can still compete in the NFL without a trademark in place, things are much harder for a music group. “If you want a record label deal, they won’t sign you unless you have a registered trademark,” said Tam.
The issue ultimately boils down to whether it’s in the government’s power to decide whether a certain trademark is offensive or not. According to Ilya Shapiro of the Cato Institute, who filed a brief in the Supreme Court siding with The Slants, it’s not its duty to do so. “It shouldn’t be the government who makes that call. Surely it is not the case that the government endorses every trademark that it registers,” he said. The government argue that it’s not stopping the band from calling themselves The Slants, it’s simply just refusing to acknowledge it as a trademarked name.
What will the repercussions of this case be for the rest of the industry? Will people start thinking more conservatively when it comes to trademarked names, or has USPTO opened the floodgates to hundreds of trademark disputes involving the disparagement clause? Time will only tell.