The Beastie Boys were talking about parties, not trademarks, when they sang, “You gotta fight! For your right!”
But even getting a trademark can be a fight in the world of rock ‘n’ roll. Today, October 2, a federal court will consider whether the Asian-American dance rock band The Slants has the right to register the name of its band as a trademark.
The problem is trademarks that disparage people cannot be registered. Even if the people supposedly being disparaged want the trademark? Doesn’t that violate their First Amendment right to free expression?
These are the questions the court will be considering. How it answers them could permanently reshape trademark law.
This case is the first in decades to squarely address the constitutional question. A decision that disparaging trademarks are entitled to registration would not only overturn the longstanding ban, it could also have big implications for a certain NFL franchise in Washington, DC.
A disparaging mark?
The Slants, which formed in 2006 in Portland, Oregon, first tried to register its name as a trademark in 2010. The US Patent and Trademark Office (USPTO) refused registration for “The Slants” on the basis that it disparages people of Asian descent.
Under federal law, trademarks that may disparage people, or bring them into contempt, are not permitted registration. NFL’s Washington Redskins, for example, was initially granted a trademark registration for its team name, but that was cancelled last June in a landmark decision that deemed it disparaging to Native Americans.
Registration is a valuable branding tool to a trademark owner. While unregistered marks may still be used in the marketplace, registration confers significant benefits. Registered trademarks enjoy nationwide protection, confer a presumption of validity and, if used continuously for five years, can be challenged in court only on limited grounds. Marks that have been refused registration are not eligible for enforcement.
In order to determine whether a trademark is disparaging to a particular group of people, the USPTO considers what the likely meaning of the mark is, taking into account dictionary definitions, the goods or services the mark represents and how the mark is used in the marketplace. If the trademark is found to refer to a particular group of people, courts ask whether that meaning is disparaging to a substantial composite of that group.
The Slants case is unique because the trademark owner, Simon Tam, is himself Asian, and the band has been widely reported in interviews as using the mark in an effort to reappropriate the term and empower people of Asian descent.
Indeed, according to a court filing, the band seemed interested in taking on the “disparaging term” in order to “wrest ‘ownership’ of the term from those who might use it with the intent to disparage.”
The minds of consumers
Generally in trademark law it is not the intent of the trademark owner that matters. What matters is what is in the minds of consumers, which is an ever-evolving beast. But this evaluation must be made in the context of the marketplace for the mark.
What matters in this case, therefore, is not whether the word “slants” disparages people of Asian descent generally. The question is whether persons of Asian descent would find the mark disparaging when used by an Asian-American dance-rock band. Who is using the mark, and in what context, matters.
These are essential parts of the inquiry. Yet, the USPTO failed to consider this context and merely looked at how the word “slants” is disparaging of people of Asian descent in a vacuum.
But this misses the mark, so to speak, in important ways. Specifically, it fails to consider use in the context of the marketplace, including the realities of the role of rock music in society. Art in general, and rock music in particular, often challenge cultural assumptions.
The question is not whether the mark in the abstract is disparaging, but whether it is disparaging as applied to an Asian-American dance rock band – one that publicly advocates for the empowerment of Asian people. The artistic community generally, and rock music specifically, are valuable cultural forces for pushing boundaries and questioning the status quo.
A larger issue in this case, however, is whether this law violates the band’s First Amendment right to free expression.
Government benefits cannot be withheld on a basis that infringes constitutionally protected rights, like freedom of speech. If speech is coming from private individuals or is commercial speech, the government generally cannot discriminate based on a point of view.
On the other hand, if the government is itself speaking, then it may promote a specific viewpoint. Whether something is government speech depends on the degree of control the government exercises over the speech and how the public perceives it. For example, in a recent case, the Supreme Court held that a state could choose whether or not to offer a license plate bearing a Confederate flag because license plate designs were government speech.
While a trademark registration is associated with the government, people are unlikely to perceive it as government speech. Also, courts have repeatedly stated that trademark registration does not constitute the government’s endorsement of a particular trademark. The printing of an American flag on a condom can be registered as a trademark, for example, but it is not government speech.
If the court decides that the prohibition against registering disparaging trademarks is perceived as promoting certain points of view over others, it will be struck down as unconstitutional. That would mean trademarks like “The Slants” and “Washington Redskins” cannot be denied registration simply because they disparage certain groups.
Music and social change
The tendency of musicians to extend their art for social change, to make people think and provoke dialogue, is a well-known and valuable aspect of modern culture.
Whether a mark is disparaging must be determined in the context of its use in the marketplace, including the manner of use and the goods and services it represents.
It’s a messy analysis, and necessarily imperfect. But such is the nature of a body of law that seeks to consider the fierce and fickle minds of consumers.