Article written by:
Keith Hock
Director of Forensic & Dispute Advisory Services

I recently attended an intellectual property CLE event held in Cincinnati, Ohio. One of the speakers was Simon Tam, a member of The Slants band and the named party in Matal v. Tam (f/k/a Lee v. Tam).  Mr. Tam is a very entertaining speaker and I found his story of being bullied as a child both moving and impactful. His impact on those he has touched through his music and anti-bullying efforts is likely much greater than even he knows. Hearing him speak was well worth the cost of the CLE all on its own.

Mr. Tam’s legal journey began in 2009 when his federal registration of the trademark “The Slants” (the name of his band, comprised of Asian-Americans) was denied as “disparaging.” After years of USPTO and legal proceedings, in June 2017, the U.S. Supreme Court ruled in favor of Mr. Tam, finding that the Lanham Act’s prohibition against “disparaging” trademarks was a First Amendment violation. In a similar (although arguably less well-intentioned – Mr. Brunetti sought registration of the mark “FUCT”) litigation, the Supreme Court decided in 2019 that the Lanham Act’s prohibitions against “immoral” or “scandalous” trademarks were also First Amendment violations (see Iancu v. Brunetti).

While it should be noted that common law trademark rights still accrue to the owner of a trademark regardless of federal registration, trademarks that are disparaging, immoral or scandalous can no longer be denied federal registration on these grounds. As a result, such trademarks will enjoy the additional benefits of federal registration.  This would seem to open a Pandora’s Box of potentially offensive trademarks being registered, including the one that was the subject of the Brunetti case. Several attorneys I spoke with at the conference disagree with the Tam and Brunetti decisions on this “public policy” basis.

So what is the right answer? Typically, I am involved in trademark cases from a damages perspective – how much money should one party pay to the other? In these cases, the damages seem less monetary and more societal. What is the societal cost of potentially offensive trademarks? What is the cost of making certain groups feel marginalized? I am sure there are other potential “damages” that I am not thinking of at the moment.

And the last question I have – what is the federal government’s proper role in the administration of trademarks? Given the existence of common law trademark rights, does the federal government need to register trademarks at all?  Should the government be in the business of providing federal registration for what is private property? Or should the government just maintain a list saying here is what was submitted to us and when?

I don’t have answers to some of these questions, and I am not sure that there are “correct” answers anyway. But, I do think that these are questions that need to be considered now that the Supreme Court has made its rulings in the Tam and Brunetti cases. It is said that the US is governed by the “rule of law,”  but in these cases, the most relevant law may be the “law of unintended consequences.”

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