Trademarks that are Scandalous, Obscene or Immoral

Grumpy DougIn Re Simon Shiao Tam, a decision of the United States Court of Appeals for the Federal Circuit rendered December 22, 2015, was recently brought to my attention.   Mr. Tam named his band “THE SLANTS” to make a statement about racial and cultural issues in the United States.  When he applied for Trademark protection, his application to register THE SLANTS was rejected as being “disparaging” of oriental people pursuant to a section of U.S. Federal law that bars registration of Trademarks that consist of “immoral, deceptive or scandalous matter or matter that may disparage … persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt of disrepute”.   Mr. Tam won his case through a constitutional argument.  The First Amendment to the US Constitution reads in part, “Congress shall make no law … abridging the freedom of speech”. The Court of Appeals indicated that it is a bedrock principle of the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.  The Court of Appeals found the provisions regarding “disparaging” Trademarks unconstitutional and commented, without deciding, that the prohibition against registering immoral or scandalous Trademarks may similarly be unconstitutional. The Tam case has wide implications.  There has been a much publicized dispute between native groups and the Washington Redskins Football team over their use of the disparaging term “Redskins”.    The Court of Appeals noted that there are currently awaiting appeal other Trademarks applications raising First Amendment issues including:
STOP THE ISLAMISATION OF AMERICA,
AMISHHOMO,
THE CHRISTIAN PROSTITUTE,
MORMAN WHISKEY,
HAVE YOU HEARD THAT SATAN IS A REPUBLICAN,
RIDE HARD RETARD,
MARRIAGE IS FOR FAGS,
DEMOCRATS SHOULDN’T BREED,
2 DYKE MINIMUM,
URBAN INJUN,
DON’T BE A WET BACK,
FAGDOG,
N.I.G.G.A. (NATURALLY INTELLIGENT GOD GIFTED AFRICANS).
There is a similar provision under Canadian law (section 9(1)(j)), that prohibits the registration of Trademarks that are scandalous, obscene or immoral.  The writer has handled a few cases where this objection has been raised.   The leading Canadian  court decision, which  dealt with an application to register BUBBYTRAP (for women’s bras), requires  Canadian Trade-marks Examiners to take into consideration evolving standards of what Canadians would consider scandalous, obscene  or immoral.    The writer was successful in convincing the Trademark Branch that the Trademark CALIFORNICATE was not one that the Canadian public would view as scandalous obscene or immoral. The Tam case in the United States raises an interesting issue, as to whether the Canadian Trademark law regarding scandalous, obscene and immoral Trademarks is contrary to the provisions concerning “freedom of thought, belief, opinion and expression” in our Canadian Charter of Rights and Freedoms.  Is the U.S. approach to the freedom of speech the best approach?  Personally, I would prefer that there be some limits on Trademarks that are scandalous, obscene or immoral in order to avoid a stream of swear words and off colour expressions being protected by Trademark.   What are your views?  Communicate with the writer at dthompson@tcllp.ca.