The Supreme Court decision in Matal v. Tam1 sparked global controversy by striking down the proscriptions against registering racist slurs as trademarks. This Article investigates the impact of the case in two ways. First, by using scholarship from the social sciences, this Article examines the limits to the argument that racial slur-appropriation is a vital form of minority self-empowerment. Drawing from this literature, this Article claims that “self” appropriation of a racial slur is critically distinct from the appropriation of a slur by an “other” group, and that removal of the disparagement bar has resulted in negative consequences particularly for Native Americans.
Second, this Article analyzes the U.S. trademark register to examine the empirical impact of the Tam decision. This analysis shows that, out of approximately four million trademark applications submitted from January 1, 2010 to January 1, 2020, the number of racially-oriented applications was low (less than one percent of total applications per year). Nevertheless, a detailed examination of 312 racially-oriented trademark applications found meaningful distinctions between which minorities actively self-appropriate slurs versus which minorities face appropriation by others.
This Article also examines the PTO’s response to racially-oriented trademark applications. From a custom-built lexicon of 537 slurs, only 11 slurs (and their spelling variants) were found to trigger a § 2(a) refusal by the PTO. These slurs were the “n-word,” “mammy,” “squaw,” “cholo,” “redskin,” “slant,” “injun,” “indian giver,” “negro,” “chink,” and “colored;” however, the § 2(a) proscriptions in relation to these slurs were inconsistently applied. Many other applications incorporating these slurs never received a § 2(a) refusal under either the disparagement or scandalous/immoral provisions. This Article argues that despite the inconsistency in its application, the § 2(a) proscriptions set a standard for government-sanctioned civility and were instructive for non-American applicants. In the vacuum left by its absence, this Article finds the PTO resorting to “failure to function” doctrine to resist some racially-oriented applications.
* 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., https://www.
uspto.gov/trademarks-application-process/search-trademark-database (last visited July 24, 2021) [perma.cc/6YST-MAD7]. We hope this Article encourages meaningful discussions on the impact of this language and the legal implications of its use.
a. 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. I thank the following people who have commented on excerpts of this work in draft form: Dr. Fady Aoun (USyd); A/Prof Catherine Bond (UNSW); A/Prof Jason Bosland (UMelb); Prof. Sonia Katyal (Berkeley); A/Prof Amanda Scardamaglia (Swinburne). Thanks to research assistance from Mitchell Adams, Alex Kwong, and Rachael Lim. I am also grateful for feedback received at the 2nd Biennial Race and Intellectual Property Conference at NYU and the Editors of the University of Illinois Law Review.
1. 137 S. Ct. 1744 (2017).
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