The Asian-American band known as “The Slants” has been fighting to register its name as a trademark with the United States Patent & Trademark Office (USPTO) since 2011. The USPTO denied the registration on the basis that it was disparaging, the same rule that was used to cancel the Redskins mark. After the USPTO denied registration, The Slants appealed the USPTO’s denial ruling to the US Court of Appeals for the Federal Circuit, and that court announced that the federal law regarding so-called disparaging marks was unconstitutional, and The Slants will get their mark.
This ruling strengthens the position of the Redskins federal appeal after the Trademark Trial and Appeal Board cancelled its mark earlier this year.
One of the problems with the ‘no scandalous or offensive trademark’ rule is that it seems to be too subjective. The Slants, for example, is an Asian-American band that seeks to reclaim what some people call a derogatory term…certainly more derogatory than the Redskins.
There are long lists of trademarks denied on the basis that the mark includes explicit sexual references or drug use. Sorry, but I’m not going to list them here, but suffice to say that there is substantial inconsistency in what is allowed and what is not. Graphical marks using the middle finger are usually denied registration, but marks using double entendre or slightly sanitized marks can make it through the system, e.g., F-Bomb Records.
It’s important to understand that denial of trademark registration by the USPTO does not mean that one loses the ability to use a mark – the Redskins still own their mark, and can still sue under most states’ laws – but not under the federal Lanham Act in the same way that the Cowboys can do (apparently it’s okay to appropriate some cultures, but not others).
And this again, is why we call it “the practice” of law…what was true last year can change on the basis of a judge somewhere that decides what is constitutional and what is not.