Do you want a GRAB THEM BY THE PUSSY t-shirt or hat? Or to shop in a store named NIGGA? Neither do I. But, did you know that the United States Supreme Court is taking up a question this term that could make both of these a very real possibility? Let me explain how, though this requires us to join several people down in gutter with their trademarks.
In 2005, Damon Wayans filed two trademark applications with the United States Patent and Trademark Office (USPTO) for NIGGA. Apparently, he was planning to open a retail store, sell clothing, and create a comedy/TV program using the word as his brand for all three. The USPTO rejected these two applications because current trademark law does not allow people to register trademarks that include “immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Stated in plain English, if a trademark is offensive (immoral, scandalous, or disparaging, to be exact), you can’t get a trademark from the US government. To his credit, Wayans didn’t try to argue with the USPTO – he moved on and seems to have abandoned his plans, at least for now.
Wayans wasn’t the first or only person to try this, of course. Just a few weeks ago, a company in Indiana filed a trademark application for GRAB THEM BY THE PUSSY to sell t-shirts and hats. It will take the USPTO, even under the best of circumstances, at least three months to even look at the application. For whatever reason, lots of people and companies are drawn to these kinds of trademarks, though many abandon their efforts once the USPTO rejects them.
Others, however, have continued to test the limits of what the USPTO will allow to go through, with somewhat confusing results. Terms like CHRISTIAN PROSTITUTE and STOP THE ISLAMISATION OF AMERICA have been rejected, while DYKES ON BIKES, TAKE YO PANTIES OFF, and CUMBRELLA (for condoms, naturally) have been allowed. These kinds of weird results came to a head a few years ago, and that is how we get to the Supreme Court in 2016.
In 2011, Simon Shiao Tam filed a USPTO trademark application for his band’s name, THE SLANTS. All four members of the band, including Tam, are Asian. The USPTO summarily refused to register this trademark for the same reasons addressed above. In particular, the office said that THE SLANTS was likely to disparage Asian people.
Undeterred, Tam appealed this decision and this case has ended up in the Supreme Court after much back and forth in the lower courts. One lower court said that Tam should have a right to register this trademark, and it overruled In re McGinley, the primary case explaining exactly why people should not have the right to register these kinds of trademarks. The USPTO has asked the Supreme Court to answer the question definitively, and the Supreme Court agreed to hear the case just a few weeks ago.
In the Supreme Court, Tam argues three things: (1) that THE SLANTS is not disparaging; (2) that the law regarding disparagement violates the First Amendment (read: freedom of speech); and (3) that the law should be invalid because it is too vague to understand.
Interestingly, an NFL football team has decided to tag along to these arguments. If you aren’t living under a rock, you probably have heard that Washington DC’s football team had several of its trademarks cancelled because the USPTO said that the term REDSKINS is disparaging to Native Americans and indigenous people. A federal court in Virginia approved of this cancellations using, in part, In re McGinley — the very important case overruled in THE SLANTS court that may no longer be good law.
The Washington DC football team has appealed the cancellations to the federal appellate court, and it also asked the Supreme Court to review its case. The Court declined to do so last month, but naturally its decision in Lee v. Tam could have a major impact in whether the REDSKINS trademarks will live to fight another day.
So what does this all have to do with a GRAB THEM BY THE PUSSY t-shirt? A lot. Until the Supreme Court makes a decision in Lee v. Tam (expected by Summer 2017), the USPTO has said that all trademark applications for offensive trademarks will be suspended. If the Supreme Court agrees with Tam, presumably these types of trademarks will be ripe for the picking, and there could be an influx of newly-registered offensive brands coming to an Instagram account (no shade to the social media entrepreneurs) near you.
There are, for example, two pending trademark applications incorporating the word NIGGA right now in the USPTO (14 have been rejected under current law), not mention the 18 pending applications using the word PUSSY and more than 100 pending applications using the word BITCH. If history is any indication, more people will flock to the USPTO to claim offensive trademarks if/once the floodgates open.
Without getting too deep into the legalese, many smart people have guessed that our current 8-member Supreme Court only took cases where it doesn’t anticipate a 4-4 split. So, we’ll probably receive some clear answers regarding offensive trademarks. Though it is impossible to predict what the court will do, I was on a panel a few years ago where lawyers who deal with these things every day predicted that these serious issues might end up before the Supreme Court. They also expressed the notion that the First Amendment may, indeed, allow for these kind of trademarks. Though right now we are all waiting, I predict the language we see on our products and services could get a lot more colorful very soon.