Offensive Trade-marks. Difficulties in Drawing the Line

December, 2015

 

U.S. Trade-mark Law Unconstitutional – Infringes Freedom of Speech

A U.S. Appeal Court has ruled that a rock band’s trade-mark application for the trade-mark The Slants may proceed.

Simon Tam, the front man of the Asian-American rock band called The Slants, has been trying for several years to register the trade-mark The Slants in the U.S. Trade-marks Office.  Tam filed a trade-mark application for The Slants in November 2011.  The U.S. Patent and Trade-mark Office rejected the application.  Section 2(a) of the Lanham Act (the U.S. version of our Trade-marks Act) prohibits the Office from registering any scandalous, immoral, or disparaging marks.  The Office found the trade-mark application to be likely disparaging to people of Asian descent and found that a substantial composite of persons of Asian descent would find the term offensive.  Tam appealed the decision.

In a decision rendered in December 2015, the U.S. Appeal Court found that Section 2(a) of the Lanham Act is unconstitutional because it violates the right to free speech in the First Amendment.  The Court ordered the Trade-marks Office to remove its opposition to the trade-mark application on the basis of section 2(a).

The facts in this case immediately bring to mind the legal battle still ongoing over the Redskins trade-mark in the U.S. courts.  Although I understand that the ruling in The Slants case does not bind the Court which will hear arguments on virtually the same issues concerning the Redskins trademark, that Court will surely review the reasoning set out in The Slants case.

These U.S. cases are interesting to consider for two related reasons.

One, the subject matter of these supposed trade-mark cases are only distantly related to trade-marks.  Making decisions about whether a trade-mark is obscene or whether the right to register a disparaging trade-mark is protected as free speech are not everyday matters on which a Trade-marks Office or trade-mark lawyers are called to opine.

Two, the struggle in the U.S. to figure out whether any kind of trade-mark, obscene, disparaging, or otherwise, is entitled to protection as a registered trade-mark brings to mind our own provisions in Canadian trade-mark law that say that a trade-mark cannot be scandalous, obscene or immoral.  One wonders how well or consistent the Canadian Trade-marks Office applies our own provisions when FCUK is a registered trade-mark.

The widely diverging decisions in the U.S. shine a light on the tension between providing people with the protection of a registered trade-mark for the mark they have chosen and not giving legal rights or credibility to low value trade-marks that are scandalous, obscene, or immoral.

It seems that the likely way forward on determining whether a trade-mark is scandalous, obscene or immoral, will be done on a case by case basis.  It is uncertain whose perspective will be used in making the decision.  This uncertainty will only increase the number of cases where trade-mark applicants challenge the ruling of the Trade-marks Office that their trade-mark application may not proceed in the application process because the trade-mark is scandalous, obscene, or immoral.

As a result of the recent success of The Slants in the U.S. on the basis of freedom of speech, we can be certain we’ll see a Charter argument raised against the blocking of any trade-mark application in Canada on the basis that it is scandalous, obscene, or immoral.     

 

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Ryan K. Smith is a Lawyer and Trade-mark Agent at Feltmate Delibato Heagle LLP.  He is a corporate and commercial lawyer with expertise in all manner of intellectual property matters including trade-marks, copyrights, domain names, and confidential information.  You can reach Mr. Smith at (905) 287-2215 and rsmith@fdhlawyers.com.