Is Slanting Trademark Protection Viewpoint Discrimination | KingSpry

Is Slant-ing Trademark Protection An Example of Viewpoint Discrimination?

Posted on February 7th, 2017
by Dr. Kathleen Conn

What do college and university sports teams with names like the Indians or the Redmen have in common with bandleader Simon Tam of “The Slants”? Both potentially run afoul of the federal Patent and Trademark Office (PTO) by refusing to abandon what the PTO calls “disparaging” trademark names.

The difference is that colleges and universities have largely abandoned using ethnic stereotypes as team names, but Tam’s attorney has argued his right to trademark “The Slants” before the U.S Supreme Court. 

Stanford University in 1972 led the colleges and universities in yielding to pressure from Native American groups and voluntarily changed the mascot of their football team from the Stanford Indian to the Stanford Cardinal, the color, not the bird. Over the years, Dartmouth, Eastern Michigan, St. John’s University and many other colleges and universities across the United States also voluntarily abandoned ethnic team names like the Indians, the Hurons, or the Redmen. However, the issue of ethnically disparaging trademarks has come to the fore again in 2017.

On January 18, the U.S. Supreme Court heard oral arguments in the case of Lee v. Tam, with the Asian American bandleader Tam arguing that the federal government was engaging in viewpoint discrimination by refusing to grant his band a trademark for the name “The Slants.” Viewpoint discrimination is a violation of the the First Amendment. Stating the government’s argument, Malcolm Stewart from the Department of Justice, began by denying such a violation, asserting that the PTO’s denial was merely placing a reasonable limit on access to a governmental program, trademark protection.

The governing federal statute in trademark law is the Lanham Act and a foundational provision in its regulations, 15 U.S.C. § 1052 (a), prohibits the registration of any trademark that may disparage institutions, beliefs, or national symbols.

Justice Breyer jumped into Stewart’s opening remarks, insisting that § 1052 appears to allow one to say something “nice” about a minority group, but does not allow saying something bad about the same group.  Attorney Stewart persisted, stating that the function of trademark is to tell the public from whom the goods and services emanate, but that people can choose trademarks that convey other meanings, for example, racial disparagement, distracting people from the true purpose of trademark and causing harm to members of the disparaged race.  Justice Kagan took up where her colleague Breyer left off, asking, if one can say good things about something or someone, but not bad things, isn’t that viewpoint discrimination?

When it was his turn to speak, Tam’s attorney John Connell, from Haddonfield, NJ, argued that if Tam had sought to register the trademark of his band as “The Proud Asians,” the Court would not even be hearing the case. Justice Sotomayor took a different tack with Attorney Connell, stating that nothing prevents Tam from using the band name “The Slants” without trademarking the name. If someone else or some other group tried to use the same name, Sotomayor continued, Tam could still sue under the Lanham Act, even if he did not have a valid trademark.

Connell fired back that Tam is in court, asking the government to protect his band to a greater extent, instead of deciding to protect what it favors and to withhold that protection from what it disfavors. Justice Kagan then appeared to switch sides, emphasizing that when a trademark is granted, the government advertises that mark in the Federal Register, essentially communicating to all that the federal government approves of the mark. Nevertheless, Connell’s final argument response was that the trademark law was not a “politeness statute.”

What may be lurking behind this battle between entitlement and disparagement is, very simply, money.

Trademarks are intangible assets to their owners, money stimulators and money makers. In July 2015, a federal judge ordered the cancellation of several of the NFL Washington Redskins football team’s trademark registrations, calling them disparaging to Native Americans. The cancellation does not go into effect until the team has exhausted its appeal. However, the impetus to appeal is staggering. According to The Washington Post, the Redskins trademark was a valuable commodity that the court would potentially destroy without just compensation, worth $2.4 billion by August 2014, with its brand management valued at $214 million. The value of the Redskins’ trademark pales in comparison to the 2011 report that the market valuation of Google’s trademark was $44 billion, the most valuable on the planet.

College and university sports teams’ trademarks are not typically earning billions of dollars for their schools, but a peek in a college or university bookstore demonstrates the wide use of the institutions’ registered trademarks.

From backpacks, sweatshirts and t-shirts, to keychain fobs and coffee mugs, apparel and trinkets bear the chosen trademarks, and students and parents faithfully purchase and proudly display the merchandise. A 2009 Forbes magazine article reported that the University of Texas Athletic Department had built a brand worth $82 million, and Nike alone paid $1 million to adorn its Longhorn jerseys with its swoosh logo.

For Tam and his band, registering a trademark, even a mark that traditionally disparaged Asians, would enable his band to market the trademark on concert t-shirts and all sorts of other paraphernalia, without fear of competition from counterfeit manufacturers. The question for the High Court is whether the government has the authority to regulate the “other meanings” suggested by trademarks. Icons like the Stanford Indian do not die easily. Stanford alumni still speak of the good old days when the Indian paraded across the football field in full Indian headdress and regalia, among the Stanford “dollies.” However, most colleges and universities have adopted the high ground. They will have to wait to see if the Court takes the same position.

 

This Collegiate Comment is a publication of the KingSpry Higher Education Law Division. It is meant to be informational and does not constitute legal advice.