Richard Bec, of counsel with the Miami's Espinosa, Trueba & Martinez.
Richard Bec, of counsel with the Miami’s Espinosa, Trueba & Martinez. (Courtesy photo)

So what is a bad word, and who gets to decide? The recent presidential election brought people’s attitudes toward offensive language sharply into focus. President-elect Donald Trump’s brashness and eschewing of political correctness may be harbingers of policy shifts in an unlikely place—the U.S. Patent and Trademark Office.

The USPTO is mired in outdated rules and procedures governing the approval of federal trademark applications. The laws are vague, the process is lengthy and has led to the stifling of free speech relating to certain groups including the LGBTQ community. However, things are changing.

Federal trademark law stems from the Lanham Act. The act is administered by the USPTO—an agency of the Department of Commerce, which is headed by the secretary of commerce who is appointed by the president. The Lanham Act requires applications for federal trademarks to be reviewed by the USPTO.

An application can be rejected or refused by the USPTO under Section 2(a) if it “consists of or comprises immoral, deceptive or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.”

The applicable case law has distilled this section so that two main reasons for rejection exist: scandalous and disparaging. There’s not much in the way of definitions for these terms, and legislative history is nebulous at best.

As one may expect, what the USPTO deems scandalous or disparaging a matter of personal opinion. The two-part test used for determining whether a mark is disparaging requires demonstration that the subject mark is disparaging to a “substantial composite of the referenced group.”

The test is akin to the one penned by U.S. Supreme Court Justice Potter Stewart in Jacobellis v. Ohio when referring to obscenity: “I know it when I see it.”

As time has passed and societal mores changed, what once qualified as immoral, disparaging or offensive is now becoming harder and harder to determine. Free speech implications abound. This has led to some wonky results (e.g., the Washington Redskins, the Slants, etc.).

The U.S. Court of Appeals for the Federal Circuit in Washington declared in December 2015 that the provision of the Lanham Act that outlaws names that “may disparage” is unconstitutional.

Acceptability

The election of Donald Trump and the Slants case are symptoms of a societal shift away from PC policies and attitudes by certain groups—including by the LGBTQ community. Many “referenced groups” are seeking to reclaim words that were once deemed to be offensive and disparaging.

Reappropriating a slur by an affected group leads to an erosion of the word’s negative use. For instance, “Dykes on Bikes” had an uphill battle to register its name after being rejected as “disparaging” by the PTSO. The group had to submit evidence that the word “dyke” was held by certain lesbians to be a badge of pride in the LGBTQ community.

Other examples of terms related to the LGBTQ community that have recently passed PTSO muster or have been applied for include: Fag, Phag, Fagout, That’s So Gay, Sexy Gay Nasty, Big Sissy, Team Sissy, Sissy Bear, Florida Is Not for Sissies, Tranny Shack, Tranny Bear, Tranny Surprise, Queer Shopping Network, Queer or Straight?, Queer Bois, Queer Beer, Dungeons and Drag Queens, and Drag Queen Bingo.

The First Amendment and changing societal views are making it harder for the government to be the judge of what is acceptable and what is not. Limiting the speech and expression of racial and sexual minorities hurts them more than it helps—particularly considering recent challenges to such groups’ abilities to express their identities and live their lives freely (e.g., transgender bathroom laws, the First Amendment Defense Act, conversion therapy, border walls, anti-immigrant sentiments, etc.).

Moreover, canceling an “offensive” trademark does not bar its use by others. In fact, it makes it simpler for others to use it whether for good or bad.

Owning a federal trademark gives an owner certain rights such as the ability to sue others that infringe on the trademark. Trademarks are good for commerce, product differentiation, diversity and creativity.

Registering a federal trademark is costly and time-consuming. Applications can take approximately 12 to 18 months to be approved or rejected. Removing the current scandalous and disparaging limitations could help streamline the process while expanding free speech protections.

The Lanham Act clearly represents a challenge to the First Amendment. At a minimum an exception appears to be brewing that encompasses federal trademark applicants who are members or identify as members of the group that is the object of slurs, epithets and other controversial words to be trademarked.

Current legal disputes show that a balance is being struck between the First Amendment, commercial speech and valid concerns over hate speech.