Rock Band Disrupts Intellectual Property Law

By: Andrew Homer *| Guest Writer

By This image or media was taken or created by Matt H. Wade. To see his entire portfolio, click here. @thatmattwade     This image is protected by copyright! If you would like to use it, please read this first. (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons

By This image or media was taken or created by Matt H. Wade. To see his entire portfolio, click here. @thatmattwade This image is protected by copyright! If you would like to use it, please read this first. (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons

The Supreme Court recently ruled that the United States Patent and Trademark Office (USPTO) cannot deny the registration of a trademark because some may find the mark disparaging or offensive. The case that led to the ruling, Matal v. Tam, upended a 70-year-old tradition of federal trademark law found in 15 U.S.C. §1052 (a) and commonly named the disparagement clause. The Court holding that the disparagement clause is unconstitutional will have broad reaching effects to other aspects of intellectual property law and the nature of the corporation.

The case, decided on June 19, 2017, starred an Asian-American rock band who attempted to register their band name, the Slants, with the USPTO. The band leader, Simon Tam, states that registering his band’s name is a way to condemn those who use the term pejoratively, reclaiming the name for the Asian community as a point of pride. The USPTO denied the Slant’s registration citing the disparagement clause. During oral arguments, the government argued that trademark registration is a form of government speech. Justice Alito scoffed at this idea by stating in his opinion “… that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.” The Court held that the disparagement clause causes viewpoint discrimination, and thus found it unconstitutional.

The unconstitutionality of the disparagement clause calls attention to other similar clauses that apply to patent law.  The Manual of Patent Examining Procedure (MPEP) instructs patent examiners to deny patent applications that “could be deemed offensive.” The MPEP also requires patent examiners to deny patent applications which use language or drawings that may be offensive. These clauses are likely unconstitutional as well.

During oral arguments, Justice Breyer pointed out that the “ultimate purpose of a trademark … is to identify the source of the product,” and he repeatedly asked what relation does the disparagement clause have to the purpose of trademarks. The government failed at answering this question to Justice Breyer’s satisfaction. Justice Alito also stressed the notion that trademarks are used for expression. Some have argued that trademark law provides corporations with more than just a means of expression, that it also enables a corporation to protect its reputation and develop a persona. From this prospective, this ruling can be seen as furthering the personhood of the corporation.

In the 1928 trademark case Yale Electric Corp. v. Robertson, Judge Learned Hand opined that a corporation uses a trademark to develop a reputation and stated that “… a reputation, like a face, is the symbol of its possessor and creator …” With Matal v. Tam, corporations are now able to develop the reputation they believe best suits the persona of their endeavors.

Andrew Homer is a second-year law student at Wake Forest University School of law. He holds a Bachelor of Arts in Chemistry and Economics from Texas Christian University and a Master of Science in Financial Economics from Texas A&M University. Upon graduation he intends to practice patent law.