Posted on Monday 26 June 2017 by Cruickshank Intellectual Property

On Monday the 19th June, the Supreme Court in the United States ruled that the laws surrounding the prevention of registering a Trademark due to ‘disparaging’ terms are in fact a direct violation of the free speech clause laid out in the First Amendment.

The case in question involved the trademark of the name ‘The Slants’ an Oregon based Asian- American dance-rock band. Formed in 2006, the band have been known for their involvement with the Asian – American community and their fight against racist stero-typing. Choosing the name The Slants was their way of communicating their ‘own slant on life’ based on personal experiences. Lead singer Simon Tam in an interview with Fox news in 2015 said:

“I named the band The Slants because it represented our perspective – our slant – on life as people of colour. It was a deliberate act of claiming an identity as well as a nod to Asian-American activists who had been using the term for decades. It was a way to address a false stereotype and to destigmatize a slur.”

Yet in 2011 the United States Patent and Trademark Office (USPTO) rejected the trademark in accordance with Section 2 of the US Trademark Act, on the basis their name was inappropriate and disparaging to people of Asian descent. However, the band decided to legally challenge this rejection deeming it a violation of free speech, a case which was voted 8 -0 in their favour last week

Following the judgement, the Supreme Court stated -

                ‘Speech may not be banned on the ground that it expresses ideas that offend.’

This court victory may now mean that the USTPO can no longer reject a trademark application based on their own opinions and assumptions of phrases, words or symbols as it directly prohibits the use of free speech.

What is significant about the Supreme Court’s decision is the direct affect it will have on another Trademark dispute. NFL team the Washington Redskins have been involved in a Trademark battle for the last number of years and one which saw their name and other registered trademarks cancelled on the grounds of being disparaging towards Native Americans. Following this the Washington Redskins challenged the decision, raising the issue of the First Amendment. While no decision has been made as of yet it is thought that the recent decision for The Slant’s will only accentuate the Redskins position in this legal matter.

While the USPTO are governed by their own set of rules, The European Union Intellectual Property Office (EUIPO) states in Article 7 that trademarks will be refused if they are found to be contrary to public policy or to accepted principles of morality. This is also part of Article 6 of the Paris Convention of which Ireland is a signatory. This basis of public policy and morality are also set out in Section 8 of the Irish Trademarks Act 1996.

While trademarks can be cancelled or rejected by any of the trademark governing bodies it does not mean that you cannot still use your mark or name.  As is the case with the Washington Redskins, their logo and branding may not be trademarked however it does not mean they need to cease business under that name, nor have to change it. What is important to note is that trademarks function as a tool of protection, prevent infringement by other businesses and distinguish your brand. Essentially they protect your most valuable asset – your intellectual property. Following loss of a registration you ultimately have no trademark protection which leads you to a vulnerable position, allowing the threat of counterfeit imposters. Customs and Border Control is one such area where you are no longer guaranteed protection. Once a trademark registration is noted, customs have the ability to impound and destroy counterfeit goods as and when they enter a country, once a trademark registration is cancelled customs involvement effectively ceases, and they will no longer seize items they believe to be counterfeit and in turn will not inform the registrant of said trademark. While counterfeit products are seen as an IP problem, they also do not comply with standard health and safety regulations posing serious hazardous consequences to the consumer. Take for instance, counterfeit clothes containing illegal dyes or unknown chemicals which affect a consumer with allergies, worse yet clothes with these chemicals could prove to be highly flammable, or drugs on the market containing substances still not approved or regulated.

With The Slants case seen as a victory, it will no doubt raise the question of what exactly constitutes as free speech or freedom of expression and in turn what is perceived as acceptable or deemed as offensive. No doubt in the coming months we will begin to see a rise of questionable trademark applications, whether they are accepted or not we will just have to wait and see.