The Lanham Act Could Lead the Conversation on Racism and Cultural Appropriation, If We Just Let It

October 2, 2018

On Friday, September 7 the U.S. Patent and Trademark Office asked the U.S. Supreme Court to overturn a December 2017 ruling by the Federal Circuit that found Section 2(a) of the Lanham Act’s bar on “immoral or scandalous” material in violation of the First Amendment. In this 2017 case, the Federal Circuit found in favor of  Erik Brunetti, who sought, and was subsequently denied by the USPTO, registration of the word “Fuct.” The high court stated, quoting Alito, “speech may not be banned on the ground that it expresses ideas that offend.”

In essence, if SCOTUS allows disparaging material to be registered, what stops brands from tarnishing other brands?

But there’s a backstory. Not long ago, in June of 2017, SCOTUS ruled that the federal government’s ban on “disparaging” or offensive language—also known as the disparagement clause of the Lanham Act—violated the First Amendment. With this opinion, SCOTUS allowed the Washington Redskin’s to maintain its name, after a decades-long battle brought about by Native American activists who pressured the team to change it. The crux of the issue, of course, was the term “redskins,” a disparaging term for Native Americans, comparable to the level of severity of racial slurs. The June 2017 case in question wasn’t even about the Redskins—it was Matal v. Tam, involving a rock band known as The Slants, who challenged the constitutionality of the above clause of the Lanham Act after being denied registration of its name on the basis of it being “disparaging”—in other words, racist—toward individuals of Asian descent. In fact, it was here that Justice Alito claimed that “speech may not be banned on the ground that it expresses ideas that offend,” espousing the offense if viewpoint-centric, and thus too messy for courts to regulate.
The USPTO appropriately claims that there is a distinction between the “scandalous” and the “disparaging” elements of the Lanham Act. However, USPTO’s recent move comes as a bit of a surprise—mainly, why now, in a time of nation-wide conversations on confederate statues, would it focus on “scandalous” material over “disparaging?”
Defining “scandalous” is difficult in this day and age. Simply from an efficiency standpoint, it is virtually impossible to keep up with what the general public—blending cultures, demographics, life experiences, and personal beliefs—finds scandalous, egregious, dishonorable, or shocking. As Rebecca Tushnet, Frank Stanton Professor of First Amendment Law at Harvard Law School, puts it,
“One person’s notion of what is scandalous would be laughable to another. Indeed, the very word ‘scandalous’ has faded from common use precisely because there so little common understanding of just what it now conveys, as opposed to what it may have meant in Jane Austen’s days.”
The same cannot be said about disparaging content. Again, Tushnet opines that, prior to the 2017 rulings, the disparagement clause of the Lanham Act protected all persons equally from disparagement. Now, SCOTUS’s “viewpoint-based” stance on disparagement muddies the waters. In other words, it makes it more difficult to call out racist behavior—particularly, the profitable kind. Further, a “viewpoint-based” stance could also defeat a major purpose behind the Lanham Act: dilution.
In essence, if SCOTUS allows disparaging material to be registered, what stops brands from tarnishing other brands?
There was a simpler time, in 2013, when it appeared that trademark law could solve socially problematic registration issues. In May of 2013, Disney filed to register “Día de los Muertos,” Spanish for “Day of the Dead.” At the time, Disney was still creating what is now the beloved animated movie Coco; it wanted to secure the rights for themed merchandise. Naturally, the Latino community did not take this lying down, protesting the corporation’s attempt to “commercialize” its culture. In fact, a petition went up on that same week, urging people to stop Disney from appropriating and exploiting a sacred holiday; it received over 21,000 signatures in less than 24 hours. Disney quickly withdrew its application.
Of course, the USPTO did not have an opportunity to weigh on Disney’s attempted registration, as the public took matters into its own hands before the application could get reviewed. It must also be noted that Disney’s intention to commodify and profit from a minority group’s sacred holiday is distinct from the “disparaging” epithets such as “redskins” and “slants.” However, one could speculate whether the Lanham Act would’ve allowed it. Arguably, Section 2(e) of the Act, barring a mark “when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them” or “when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,” could be read to ban the use of “Day of the Dead” outside of the context of the Mexican and Latino cultures that gave life to. We will never know, but the answer to the people seemed clear: it was not for Disney to claim.
So, why now, five years later, can the NFL claim derogative term for an entire culture of persons? Instead of focusing on the nebulous meaning of “scandalous,” the USPTO should dig its heels into stopping profitable racism. After all, SCOTUS has come around with regards to outlawing discrimination. If history truly repeats itself, it will only be a matter of time before in recognizes the power the Lanham Act’s disparagement clause has in curbing profitable racism.