Supreme Court appears of two minds on whether trademark rejection limits free speech | McClatchy Washington Bureau

An Asian-American band from the West Coast that wants to trademark its provocative name, The Slants, sparked some dissonance Wednesday at a Supreme Court that’s about to be recast by President-elect Donald Trump.

Justices across the spectrum sounded sympathetic to the band members’ claim that the U.S. Patent and Trademark Office was picking and choosing speech by denying the trademark application. At the same time, justices suggested the government’s action left The Slants with many other options for communicating.

“No one’s stopping your client from calling themselves ‘The Slants,’ ” Justice Sonia Sotomayor told the band’s attorney. “No one is stopping them from advertising themselves that way.”

A trademark specialist while in private practice, Sotomayor added that the Portland, Oregon-based band’s trademark application amounted instead to “asking the government to endorse your name to the extent of protecting it.” Several of her colleagues echoed her point.

“You can use these words at any time in your performance,” Justice Stephen Breyer said. “You have the entire universe where you can say what you want, including this.”

The hourlong oral argument Wednesday morning centered on the Lanham Act and the First Amendment. The broad trademark law, named for the late Fort Worth, Texas-area Congressman Fritz G. Lanham, prohibits trademark protection for material that “may disparage . . . persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.”

Citing the 1946 law, a U.S. Patent and Trademark Office examiner rejected a trademark application brought in 2011 by musician Simon Shiao Tam. Tam says he called his band, formed in 2006, The Slants “to take on these stereotypes that people have about us, like the slanted eyes, and own them.” Officials rejected the justification.

“The fact that (Tam) has good intentions underlying his use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable,” the Trademark Trial and Appeal Board later concluded

A victory for The Slants could have far-reaching consequences, starting with the Washington Redskins football organization. The team is likewise appealing the government’s revocation of its trademark.

The Redskins, like the Slants, argue in part that trademark examiners are inconsistent and seemingly arbitrary in their actions. In a legal brief, the football team noted the Patent and Trademark Office has registered names that include Yardapes landscaping services, Baked by a Negro baked goods, Dago Swagg clothing and Yid Dish online dating newsletter, at the same time as other applications have been rejected.

“There’s a large concern with vagueness here,” Justice Ruth Bader Ginsburg said Wednesday.

Deputy Solicitor General Malcolm L. Stewart countered that “it’s not surprising that there is some inconsistency,” noting the Patent and Trademark Office handles about 300,000 trademark applications annually.

Underscoring the complications of the case, and the danger in predicting a final outcome, justices battered Stewart from right and left during his 30 minutes at the podium. In particular, justices pressed him on the way the trademark office allows some messages but not others to have the government’s protection.

“You can say something good about somebody, but you can’t say something bad about somebody,” Justice Elena Kagan said. “I would think that is viewpoint discrimination.”

Justice Anthony Kennedy, echoing the First Amendment perspective, noted that the Slants are “using a market to express views” that may be protected. The array of questions fired at Stewart seemed to suggest a majority of justices might side with The Slants.

But though justices voiced concerns over the government’s case, band attorney John C. Connell drew equally sharp questions, and he offered answers that did not appear to entirely satisfy the bench. At times, Connell seemed to adopt a free-speech position beyond where justices were willing to go.

“The First Amendment protects absolutely outrageous speech as far as trademarks are concerned?” Kennedy asked.

“That is correct,” Connell said.

Justice Clarence Thomas, in keeping with his customary practice, did not speak or ask questions during the argument. A decision is expected to be issued by the time the court’s current term ends in June.