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Supreme Court’s offensive trademark decision could spark ‘unintended consequences,’ UB law expert says

Release Date: June 21, 2017

Mark Bartholomew, professor, University at Buffalo School of Law.

“If I were the CEO of a company with a famous trademark, I'd be nervous.”
Mark Bartholomew, professor
University at Buffalo School of Law

BUFFALO, N. Y. – The Supreme Court’s decision that a federal law banning trademark registration for “disparaging” brand names is unconstitutional “shuts the door” on the government’s ability to block all offensive trademarks according to a University at Buffalo expert on copyrights and trademarks.

The ruling also opens the door to “unintended consequences” for businesses and consumers.

Mark Bartholomew, a professor in UB’s School of Law who has been studying the case, says this week’s Supreme Court decision to strike down a 71-year-old trademark law barring disparaging names because it infringes on free speech rights will prevent the government from refusing to register disparaging trademarks such as the Washington Redskins.

 “It’s a flat out win for Washington owner Dan Snyder,” says Bartholomew.

“The decision also prevents the government from refusing to register marks it considers immoral or offensive to the general population,” says Bartholomew, who cited the “unintended consequences” of the ruling.

“It also calls into question other doctrines in the law that let famous brands sue to stop others from using their marks in ways that may be offensive but are in no way confusing to consumers,” Bartholomew says.

“If I were the CEO of a company with a famous trademark, I'd be nervous.”

This week’s Supreme Court ruling sided with an Oregon-based Asian-American rock band called the Slants, calling the ban on names that disparage racial and ethnic groups unconstitutional. Bartholomew hosted a symposium with Slants founder Simon Tam as well as trademark scholars and practitioners earlier this year.

Tam said his goal was to reclaim a derisive slur and transform it into a badge of ethnic pride. But the U.S. trademark office said a term can be disparaging even when someone like Tam intends to use it in a positive light. The Supreme Court upheld a federal appeals court that had sided with the band, ruling that the law violates the First Amendment.

“In general, the Tam decision reads as part of the Supreme Court’s general program over the past few years of tying one hand behind the government’s back when it tries to regulate advertising,” says Bartholomew. “More free speech perhaps, but less protection for consumers in the marketplace.”

Bartholomew has been frequently quoted in regional and national media on issues of intellectual property and law and technology, as well as copyright, trademarks, advertising regulation and online privacy. Bartholomew is the author of “Adcreep: The Case Against Modern Marketing,” published last month by Stanford University Press. He is available for interviews on request.

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