America! It’s a land of flags, Twinkies, NASCAR. and Constitutional amendments.  Matal v Tam (PDF) is the most recent warning not to get between an American and any of those things.

The case concerned the application by a “new-wave dance rock” band to register their band name as a trade mark. Ordinarily, the US Patent and Trademark Office (PTO) would let such an application sail through, notwithstanding any reservations it might have as to whether “new-wave dance rock” is a legitimate genre of music.

However, this particular application found its way to America’s highest court, and resulted in a new ruling on one of America’s most cherished ideologies that has ignited debate on the Twittersphere.

The band name? The Slants.

US Trade Mark law: a refresher

Alongside the familiar requirement of distinctiveness, US trade marks legislation prohibited the registration of a trade mark that may “disparage … or bring … into contempt or disrepute … persons, living or dead” (the Disparagement Clause).

Accordingly, the PTO refused The Slants application asserting that it was a derogatory term for people of Asian descent.

The members of The Slants, each whom are Asian-Americans, appealed this decision up to the Supreme Court.  They argued that such a refusal was a violation of the Free Speech clause of the First Amendment, and believed that they were helping to transform what once was a slur and were “using the term in a reappropriated, self-empowering way”.

Prodigious babbling

The Supreme Court found that the Disparagement Clause was “not an anti-discrimination clause; it is a happy-talk clause” and that it “offends a bedrock First Amendment Principle: Speech may not be banned on the ground that it expresses ideas that offend”.

In coming to this conclusion, the Court soundly rejected the PTO’s argument that the content of a registered trade mark is “government speech” (which is not subject to the limitations of the First Amendment).

If trade marks were in fact government speech, the Supreme Court found, “the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things … It is expressing contradictory views. … And it is providing Delphic advice to the consuming public”. Such a conclusion was “far-fetched” (although, arguably it is an apt characterisation of some of the speech currently emanating from particular characters within that Government).

In particular, the Court was concerned that if trade marks were classed as government speech (and thus excluded from First Amendment protection) the natural next step would be to also exclude registered copyrighted works from such protection.

All in all, the Supreme Court affirmed that core tenet of American free speech: you may offend whatsoever and whomsoever you please, but you may not offend the Constitution of the United States of America.

The Supreme Court’s ruling only renders the Disparagement Clause unconstitutional, not the whole section from which it comes. For example, section 2(a) also prohibits registration of “immoral, deceptive, or scandalous matter[s]”. The extent to which that provision survives post-Tam remains to be seen.

What about Australia?

Under section 42(a) of the Trade Marks Act 1995 (Cth) a trade mark application must be rejected if it “contains or consists of scandalous matter”.

There is little clarity in terms of the legal definition given to scandalous matter. IP Australia’s guidance in the Trade Marks Manual suggests that a trade mark should be refused under this section if it is “shameful, offensive or shocking”.  However, the guidelines suggest that a distinction should be drawn between marks that are scandalous (personal, racial, religious abuse, for example), and those that are simply made in bad taste (the examples of “LOOK GOOD + FEEL GOOD = ROOT GOOD” and “I DON’T GIVE A FLYING F¬♦ ♥ ■” are given). These examples simply demonstrate how subjective the issue can be, as can be seen from the decision to accept POMMIEBASHER in 2011 in the face of an objection, in circumstances in which the ASIC refused to register the business name.

One thing that is clear is that humour can play an important role in distinguishing an acceptable mark from an objectionable one. The decision to accept NUCKIN’ FUTS in class 29 (subject to the endorsement that “It is a condition of registration that the trade mark will not be marketed to children”) provides a case in point.

Finally, it is important to note that the legal tests discussed here relate only to the registrability of the names at issue. To the extent that such names do not infringe existing registrations or otherwise breach legislation or the common law, they are free to be used, and the market will ultimately determine their commercial success (or lack thereof).