The Washington PostDemocracy Dies in Darkness

Warning: This article on trademarks may include language deemed ‘scandalous, immoral or disparaging’

Members of the Portland, Ore.-based rock band the Slants, from left, Tyler Chen, Ken Shima, Simon Tam and Joe X. Jiang, photographed in August 2015. (Anthony Pidgeon/via Reuters)

In the 1930s, the government agency responsible for the respectability of trademarks decided that the word Madonna was unsuitable for a brand of wine.

“It is true,” said the court reviewing the decision, “that the Bible records that the Savior changed water into wine at the behest of his Virgin Mother at the wedding feast, and quotations can be made from the Bible commending the use of wine.”

But “it is also true that the evils growing out of the excessive use of intoxicating beverages are probably much greater today than they were 1900 years ago,” and given the fact that “The Virgin Mary stands as the highest example of the purity of womanhood,” it went on, “we think such use of the word ‘Madonna’ would be scandalous.”

Trademark denied.

The same fate met an application in 1951 for “Dough-Boy” as a trademark for medicine to treat sexually transmitted diseases. The reason: It disparaged American soldiers in World War I, commonly described as “doughboys.”

Then there was the case of “Big Pecker Brand” T-shirts, which featured a bird, but was nevertheless rejected by a trademark examiner in part because Webster’s Third New International Dictionary included “penis” as its third definition.

Trademark denied, at least until the appellate reviewer, the Trademark Trial and Review Board, got a hold of it and decided that the applicant had “demonstrated from dictionary definitions of ‘pecker’ that its primary meanings to the public are innocuous, namely, one that pecks, a woodpecker or a bird’s bill.”

One could go on about the Lanham Trademark Act. One will go on.

“Bubby Trap,” was held to be off limits for bras as it “would be offensive to the public or individual sense of propriety or morality,” and “1-800-Jack-Off” for a telephone sex line.

So was “Twatty Girl” for a newspaper cartoon strip, despite the fact that “Twattytrax” had already been approved, as Megan M. Carpenter and Kathryn T. Murphy pointed out in a 2010 law review article with a title that, well, is scandalous for The Washington Post without the appropriate dashes: “Calling Bulls––– on the Lanham Act.”

As the appeals court said in the case accepted by the Supreme Court Thursday, the Patent and Trademark Office’s record is anything but consistent. “The PTO denied the mark HAVE YOU HEARD SATAN IS A REPUBLICAN because it disparaged the Republican Party,” said the court. But it “did not find the mark “THE DEVIL IS A DEMOCRAT disparaging.” (Forgive the yelling. This is the way trademarks are always written in legal documents.)

“It registered the mark ‘FAGODOG’ three times and refused it twice, at least once as disparaging.”

And there’s more, they write:

The mark, TECHNODYKE, was registered in 2001 for a lesbian-oriented website, but the marks DYKESINTHECITY for clothing, DYKEDOLLS for lesbian dolls, DYKE TV for lesbian-oriented television programming, and SUPERDYKE for clothing were rejected. Additionally, the mark QUEER GEAR, for clothing, was registered, while the mark CLEARLY QUEER, also for clothing, was not successfully registered.

It is a law called the Lanham Act that gives the federal government the power to refuse to register or to cancel trademarks deemed scandalous, immoral or disparaging — let’s call it SIOD for short.

On the basis of that law, the United States Patent and Trademark Office, for example, determined that Redskins, as in Washington Redskins, was SIOD and canceled its trademark.

It decided that a group of Asian American musicians led by Simon Shiao Tam could not register a trademark calling themselves the Slants, because an examiner found it disparaging to “persons of Asian descent,” like Tam. The board offered no evidence of anyone objecting to Tam’s use of the word, but rather consulted dictionaries.

That decision prompted an appeals court to declare unconstitutional the whole process of the government determining who can call themselves what, a ruling the U.S. Supreme Court announced Thursday it would review.

In the musicians’ case, as The Post’s Robert Barnes wrote, “The patent office said the name was likely to disparage a significant number of Asian Americans. But Tam said the point of the band’s name is just the opposite: an attempt to reclaim a slur and use it ‘as a badge of pride.’ ”

Supreme Court to review case important to Redskins trademark fight

The primary purpose of the 1905 Trade Mark Act, later reenacted as the Lanham Act in 1946, is twofold, as Carpenter and Murphy wrote in their law review article, “including lessening of consumer search costs and encouraging producers of goods and services ‘to invest in quality by ensuring that they, and not their competitors, reap the reputation-related rewards of that investment,’ thereby protecting consumers from deceptive practices.”

While some member of Congress, or at least a staffer, must have known why they inserted the SIOD provision, nobody has ever found the explanation.

Nor did Congress provide much in the way of definition.

What is SIOD?

“It is always going to be just a matter of the personal opinion of the individual parties as to whether they think it is disparaging,” said the PTO’s assistant commissioner in 1939, as he explained his own discomfort.

Why the Washington Redskins are using the case of an Asian American rock band to save its trademark

In the meantime, many have questioned whether a government examiner in the trademark office should have the power to decide such free speech issues as what is and what isn’t SIOD.

In December, the U.S. Court of Appeals for the Federal Circuit decided that, indeed, it shouldn’t.

Writing for the majority, Judge Kimberly A. Moore said:

The government enacted this law — and defends it today — because it disapproves of the messages conveyed by disparaging marks. It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle governs even when the government’s message-discriminatory penalty is less than a prohibition.
Courts have been slow to appreciate the expressive power of trademarks. Words — even a single word — can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription … is unconstitutional.

In its petition urging the Supreme Court to take up the case, the federal government argued that the law does not prohibit or restrict speech.

For one thing, an individual is free to use a disparaging term to identify his or her goods or services — in this case a band — notwithstanding the absence of a registered trademark.

What the government is doing is simply offering “federal benefits … on terms that encourage private activity consonant with legislative policy … It simply reflects Congress’s judgment that the federal government should not affirmatively promote the use of racial slurs and other disparaging terms by granting them the benefits of registration.”

That’s a familiar argument similar to the justification for withholding federal funds, or any benefit, as a lever against activity of which the government disapproves. The government is not banning anything, just discouraging it.

The appeals court, in the Tam case, found the argument wanting, particularly when it comes to free speech.

“Faced with the possibility of being denied” a trademark registration, “or worse, cancellation after years of investment-backed brand development — new brand owners are more likely to avoid brand names that may arguably be controversial for fear of later being deemed disparaging.”