Court decision clears registration path for “questionably offensive” trademarks;
could possibly negate challenges to use of Chief Wahoo logo

By Jamie Pingor and Kevin Soucek.

“Questionably Offensive Trademarks Cleared for U.S. Registration,” also appeared online in Crain’s Cleveland Business on July 12, 2017.

On June 19, 2017, the U.S. Supreme Court ruled that the disparagement clause violates the Free Speech Clause of the First Amendment. This decision emanates from the case involving the lead singer of the rock group called “The Slants” who sought federal registration of the mark “THE SLANTS”. The registration was originally denied by the United States Patent and Trademark Office (USPTO) because the name was determined to be offensive to particular ethnic groups that have been described as having slant-eyes.

At issue in this case is a provision that prohibits the registration of a trademark “which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Since the disparagement clause applies to marks that disparage the members of a racial or ethnic group, the U.S. Supreme Court had to decide whether the clause violates the Free Speech Clause of the First Amendment. As a result, the U.S. Supreme Court had to consider three arguments that would either eliminate any First Amendment protection or result in highly permissive rational-basis review.

The Government’s arguments were: (1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine.

In short, the U.S. Supreme Court stated that: (1) Trademarks are private, not government, speech; (2) that just about every government service requires the expenditure of government funds; and (3) that the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.

The U.S. Supreme Court stated that it is unmistakable the Government has an interest in preventing speech expressing ideas that offend, but that this idea strikes at the heart of the First Amendment. The U.S. Supreme Court further stated that speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”

Therefore, the U.S. Supreme Court held that the disparagement clause violates the Free Speech Clause of the First Amendment.

Only time will tell how much of an effect this ruling will have on U.S. trademark registrations moving forward. Perhaps this ruling will offer plausible protection to sports teams that use logos which could be viewed as disparaging?

For example, the Cleveland Indians’ Chief Wahoo logo, which remains popular among fans, has been viewed, by some, as a disparaging depiction. The Chief Wahoo logo remains a registered trademark; and the registration was recently renewed in March 2016. Will this ruling encourage the continued registration of the Chief Wahoo logo? Will others continue to petition for Chief Wahoo’s removal from the sport of baseball? Nonetheless, what remains clear is that the USPTO is not permitted to prevent certain disparaging speech expressing ideas with regard to trademark registrations.

Jamie Pingor is a partner and Kevin Soucek is an associate in the Intellectual Property Services group of Cleveland-based Walter | Haverfield LLP.