Asian music group “The Slants” recently sent an application in to the Trademark Office to register their band name. The Office rejected their application as obscene and defamatory to a group of people or culture. Under the Lanham Act, which is the statute regarding trademarks and the Trademark Office, the Trademark Office has the authority to reject an application for federal registration of a trademark under certain circumstances. One of these is if a trademark is “obscene” or is offensive or defamatory to a particular culture, religion, etc. The Act does not define “obscene” in order to take account of changing cultural mores. Instead it relies on the opinion of the trademark attorney examining the application.
Federal registration of a trademark provides statutory benefits including a presumption that the trademark is valid and that the person or company registering it owns that trademark, nation-wide priority, attorney’s fees if another infringes the trademark and other benefits. But federal registration is not necessary to use a trademark. You have a basic First Amendment right to use your trademark in commerce, as long as it cannot be confused with another trademark. So even if a trademark is rejected by the Trademark Office and cannot get federal registration, a trademark owner can still use that trademark. It will just not receive the statutory benefits available under the Lanham Act.
When the Trademark Office refused to register the name “The Slants”, it stated that such a name is offensive to Asian people and people of Asian descent as the name was a derogatory term to describe Asian people. The band appealed, stating that the Trademark Office’s refusal to register their trademark was a violation of the First Amendment rights. They argued that the band’s members are all Asian, that they intentionally picked that name as a way to reclaim a derogatory term, and that the name was an important part of their art. The last piece is a particularly interesting argument. Artists have always had strong protections under the First Amendment’s freedom of expression. This has protected them when other deemed their work to be obscene. (Brooklyn Gallery, anyone?) The question for the appellate court is whether denying the Slants federal protection under the Lanham Act somehow takes away from their First Amendment rights.
Even without federal registration, they still have legal recourse if someone infringes their mark. This might undermine the Slants’ argument that their First Amendment rights have been violated. While the Lanham Act gives certain statutory rights as mentioned above, the Slants can still seek damages if someone infringes their trademark, and injunction to stop the infringer and other legal remedies. It could be an uphill battle for the Slants, but if they are successful they will change trademark law.