Earlier, any mark which has been filed for registration could be refused registration by the USPTO on the ground that it consists of “immoral, deceptive, or scandalous matter[s] or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”.
The order was passed in the case of Matal v. Tam, when ‘The Slants’, a rock band based out of Oregon, filed for a trademark to protect the name of their band in 2010, but was refused by the USPTO on the grounds that the name is a racial slur.
This decision was challenged by the founder of the band, Simon Tam, and finally, the case reached the US Supreme Court. It is interesting to note that this is not the first time that a trademark has been rejected on the ground of disparagement clause. Earlier a group ‘Dykes on Bikes’ a lesbian motorcycle club was denied a trademark because of its “vulgar” name but was later granted the same.
The Supreme Court ruled that even trademarks considered to be derogatory deserve First Amendment protection. The decision was a victory for an Asian-American dance rock band dubbed The Slants — and, in all likelihood, for the Washington Redskins, whose trademarks were cancelled in 2014 following complaints from Native Americans.
While defending the First Amendment's freedom of speech protection, the justices did not remove all discretion from the U.S. Patent and Trademark Office. But they raised the bar for trademark denials so that names deemed to be offensive can survive.
"It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend," Justice Samuel Alito wrote for a unanimous court. He rejected the government's argument that protected trademarks become a form of government, rather than private, speech.
"If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently," Alito said. "It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public."
The nation's capital has been captivated for years with the battle over the Redskins' name, but the high court had left the football team's case pending at a federal appeals court in order to hear the challenge brought by band leader Simon Tam and his Portland, Oregon-based foursome.