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Excerpted From: Vicki Huang, Trademarks, Race and Slur-appropriation: An Interdisciplinary and Empirical Study, 2021 University of Illinois Law Review 1605 (2021) (288 Footnotes) (Full Document)


Racist words and images can now be registered as trademarks in the United States of America. This is thanks to two recent Supreme Court cases, Matal v. Tam and (to a lesser extent) Iancu v. Brunetti. In those cases, the Court struck down the § 2(a) Lanham Act prohibitions against the registration of “disparaging” and “scandalous/immoral” marks for violating the First Amendment's protection of freedom of expression. Controversially, the Tam decision spoiled the protracted efforts by some Native Americans to de-register NFL-owned disparaging trademarks such as “redskins.”

After Tam, the plaintiff rock star Simon Tam proclaimed the ruling to be “a win for all marginalized groups.” This Article uses social science research and empirical analysis of the trademarks register to dispute this view. This Article claims that this rhetoric is based on a false premise. It assumes equal access to an idealized circle of free speech, slur-appropriation, and self-empowerment. This Article claims that minorities face inequity in an unequal way and that due to that inequity, the loss of § 2(a)'s “disparaging” and “scandalous/immoral” provisions may entrench and legitimize the use of slurs against more vulnerable “marginalized groups.”

In Part II, this Article discusses the background to the Tam case. Part III reviews the social science literature on the psycho-social dynamics of racial slur appropriation. Part IV sets out a detailed method to find trademark applications incorporating racial slurs (“racially-oriented trademark applications”). It also sets out a method to define “self-appropriating applications” and “other-appropriating applications” (i.e., applications for a racial slur from a non-affected group). Part V analyzes 312 racially-oriented trademark applications, including the PTO examiner files. It sets out descriptive statistics and discusses whether and how § 2(a) refusals were applied by the PTO. The conclusion at Part VI, discusses the normative implications of these results.

Under the Lanham Act, trademarks can be federally registered subject to the administration of the PTO. To be eligible, at a minimum the trademark must be distinctive and must be used (or intended to be used) in trade or commerce. In other words, a registrable trademark must act as a source identifier and distinguish the applicant's goods or services from those of other traders. The PTO can refuse to register a trademark for failing to meet these threshold requirements but typically a PTO refusal will cite to numerous and more specific grounds for refusal. Historically, these included refusals based on § 2(a) of the Lanham Act (that the trademark is “disparaging” or “immoral/scandalous”).

These provisions were challenged and struck down by the Supreme Court in two separate cases, Tam and Brunetti for violating the First Amendment's protection of freedom of expression. The first case, Tam, began with lead singer Simon Tam's quest to register the name of his Asian American rock band, “The Slants,” in Class 41 for entertainment services et al. Simon Tam said he chose the name “The Slants” to reclaim this slur against East Asians and “drain its denigrating force.” Tam stated that by self-labeling his band with the racial slur “The Slants,” he was “engaging in a process of self-empowerment called reappropriation, where we own/change the meaning of harmful terms to reduce their sting.”

The PTO refused the application under the disparagement provision of § 2(a), which prohibited the registration of trademarks “which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This law did not distinguish between the self-disparaging use made by Tam from disparaging use of a slur to target another group. Tam's appeals progressed to the Trademark Trial and Appeal Board (“TTAB”) and then to the federal court. Finally, on June 19, 2017, the Supreme Court unanimously affirmed the en banc Federal Circuit's opinion that the disparagement clause was facially unconstitutional under the First Amendment.

About two years later, in Brunetti, the Supreme Court considered Erik Brunetti's appeal in relation to his application for the trademark “fuct” in connection with a clothing line. The PTO had refused his application under the adjacent “immoral/scandalous” provision of § 2(a) of the Lanham Act. On June 24, 2019, the Supreme Court held that this provision was also in violation of the First Amendment and struck it down. Brunetti's trademark for “fuct” has since proceeded to registration.

Both the disparagement and the immoral/scandalous provisions were historically used to refuse trademark applications incorporating racist words or images. Therefore, there was world-wide interest in the outcomes of Tam and Brunetti and concern that the PTO would be flooded with applications for racist trademarks. Indeed, in the aftermath of Tam the media reported on an influx of applications, including trademark applications for the “n-word.” Some of these applicants were activists who claimed they sought to capture the “n-word” in the interests of self-appropriation or to prevent hate groups from using racist marks in commerce.

In the immediate term, high-profile efforts by Native Americans to de-register trademarks such as “redskins” collapsed due to the Tam decision. In the case of the “redskins” marks, a group of Native Americans brought cancellation proceedings against the marks' owners, the National Football League (NFL). The TTAB agreed that the marks disparaged Native Americans and ordered the marks be cancelled. The NFL appealed, but the case was put on hold pending the outcome of the Supreme Court decision in Tam. Twelve days after the Tam decision, on June 29, 2017, the petitioners conceded that Tam was controlling and withdrew their petition for cancellation.

These outcomes have provoked passionate debate between free speech advocates (such as Simon Tam) and those that favor greater cultural sensitivity.

The Court's opinions generated significant media and legal commentary, including reflections on the First Amendment, discussions on methods to subvert unjust outcomes, and reviews of PTO practices. This is the first Article (to the author's knowledge) to use social science research to examine the limits of Tam's “slur appropriation as empowerment” claims and the first to empirically evaluate the impact of the Tam decision against activity on the trademark register.

[. . .]

The social science literature lends qualified support to the idea that if a target group is sufficiently empowered in a collective sense (which could be enhanced through legal or other structural support), individuals may seek to self-label with a derogatory slur. In doing so, self-appropriation can invert the meaning of the slur and can increase the perceived power of the overall group. This Article contends that trademark law can amplify the costs and benefits of this process but finds that applications for racially-oriented trademarks are relatively uncommon.

Nevertheless, the results reveal that while the number of applications were low, there was a real difference in the nature of the racially-oriented trademark applications after Tam. Bearing in mind the limitations in the methodology, the empirical results show that after the Tam decision, there was an absolute and relative increase in self-appropriating applications (forty-nine) over other-appropriated applications (thirty-eight). Of the minority groups studied, a relatively high proportion of self-appropriation activity was evident from African American, Asian, Jewish, and Latinx groups. For Native Americans, however, the opposite was found. That is, other-appropriating applications continued to outnumber self-appropriating applications.

The disproportionate number of other-appropriated Native American marks may indicate that between Native Americans and “others,” there may be a power disparity or an access disparity. Native Americans could also have a different cultural attitude to branding with a self-disparaging slur or image. The relationship between Native American groups and trademark law is a sensitive issue and has been discussed by scholars such as Riley and Carpenter and others. The issue deserves deeper investigation and further research is being conducted to compare and contrast the treatment of indigenous cultural property as trademarks with the frameworks used in Australia and New Zealand.

Although the number of racially-oriented applications has been historically low, the result of Tam is that future applications are much more likely to become registered trademarks. While some traders may have success with slurs as an attention seeking strategy, ultimately the consumer will decide whether branding with a slur pays dividends. In Tam, the Court said, the “proudest boast of our free speech jurisprudence is that we protect the freedom to express 'the thought that we hate.”’ Personal feelings come second to the “uninhibited marketplace of ideas ... [and] the ability to incite debate.” In this sense, free speech advocates preserve a hope that the consumer or the market will eventually “shout down” those that promote the use of racist or offensive slurs as trademarks. Or, that sufficient debate creates consensus as to whether certain words should be considered offensive slurs. Under this view, society should permit the use of derogatory trademarks because in a free market, the consumer is the best arbiter of “disparaging” or “scandalous/immoral” marketing.

While this view is attractive, in a free market, typically those with power have the loudest voices and those in power tend to preserve the status quo. It is usually more difficult for marginalized groups to make themselves heard by the wider community unless there is some kind of catalyst or wider collective action. It is therefore interesting that since Tam and Brunetti, many events such as the Black Lives Matter movement have triggered a greater awareness and responsiveness to the role of race in America. Anecdotally, these events have led to increased consumer pressure for more socially “woke” marketing and this has led to many companies removing or revising their racially-oriented branding. High profile reversals include trademarks for “redskins,” “Aunt Jemima,” and the “Land O' Lakes Girl.”

Nevertheless, it is difficult to say that consumer activism is an optimal model of regulation. Although the PTO struggled with the application of § 2(a) and continues to resist applications for the “n-word” under other doctrines, the alternative--the free market--can be equally unpredictable. It is also difficult to imagine high-profile companies de-registering their marks had it not been for the tragic events surrounding the Black Lives Matter movement, COVID-19, and subsequent social consciousness raising. It would be a bleak hope to think that only tragedy could provoke corporate social responsibility. Even in the absence of these tragedies, the free market may be an unreliable or risky arbiter of social norms, particularly in light of the polarity in public discourse during the Trump era. Therefore, for vulnerable or voiceless communities, for those who feel bombarded by less recognized slurs, or for those who have grown weary from “the fight,” the loss of the disparagement bar is something to be truly lamented.

This Article contains offensive language in a discussion of race and slur-appropriation in trademark law. Due to their offensiveness, we present trademarks in “lower case” instead of conventional block capitals. For the same reason, images are not reproduced. For an accurate depiction of these trademarks, readers can find the trademark via USPTO public databases such as the Trademark Elec. Search Sys., (last visited July 24, 2021) []. We hope this Article encourages meaningful discussions on the impact of this language and the legal implications of its use.

Senior Lecturer, Deakin Law School, Melbourne, Australia. LLB (Hons) Melb.; LLM Columbia; PhD Melb; Admitted to the Supreme Court of Victoria, the High Court of Australia and the State Bar of California.

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