Korematsu Center asks SCOTUS to deny federal registration of disparaging trademarks

November 17, 2016

WASHINGTON, D.C. - On November 16, 2016, the Fred T. Korematsu Center for Law and Equality (Korematsu Center) was joined by the Hispanic National Bar Association, the National Asian Pacific American Bar Association, the National Bar Association, the National LGBT Bar Association, and the National Native American Bar Association in filing an amicus brief with the Supreme Court of the United States, urging the Court to reverse the decision of the Federal Circuit that had found unconstitutional the Lanham Act's provision that permitted the U.S. Patent and Trademark Office to deny or rescind federal registration of racially disparaging trademarks.

The trademark registration in Lee v. Tam involved an Asian American dance band that named itself by a racial slur as part of an attempt to re-appropriate the term. The outcome of this case will likely affect a different case involving the cancellation of the federal registration of several trademarks of the Washington R-skins.

A common public misperception is that denial or cancellation of federal registration means that the band and the Washington, D.C. football team would lose their trademarks or would no longer be able to use their names. This is not the case. They remain free, as they have, to continue using their racially disparaging trademarks and can still sue to protect against infringement.

Robert ChangThe amicus brief argues that denial of racially disparaging trademarks falls within the government's power to regulate commerce and is especially important because of the way such trademarks can lead to a return to a segregated marketplace. Robert Chang, executive director of the Korematsu Center, wrote in the brief that disparaging trademarks "have the effect of decreasing full consumer participation in commerce while also sending the message that the government is a participant in endorsing, advancing, and promoting that behavior."

The brief discusses the hypothetical restaurant named "Spics Not Welcome," as posed by Judge Jimmie V. Reyna of the U.S. Court of Appeals, Federal Circuit in his dissent. If such a restaurant served Latino customers, despite its name, it might not run afoul of Title II of the 1964 Civil Rights Act. But the name itself "communicates a discriminatory intent as harmful as the fruit produced by discriminatory conduct." The brief then connects this hypothetical to the gun shops in several states that have posted signs declaring themselves to be "Muslim Free Zone[s]" and Indiana's Religious Freedom Restoration Act, which would appear to permit businesses to post "Gays Not Allowed" signs. Though nothing prevents these signs from becoming trademarks, the brief argues that the federal government should not support it by conferring benefits to the mark holders through federal registration.

"Private acts and expressions of racism can be terrible and damaging, but they take on a wholly different meaning and are particularly corrosive to our ideal of an integrated society when they occur with the sanction of government," the brief states.

A team of attorneys at Perkins Coie — William Rava, Elvira Castillo, David Perez, Cara Wallace, and Dane Westermeyer — served as pro bono counsel on the brief.

Read the full brief here.

The Korematsu Center previously filed briefs on this issue before the Federal and Fourth Circuits of the United States Court of Appeals. Argument has not been scheduled but is expected to be in January 2017.

You can read more about the Korematsu Center's work at our website.

Robert S. Chang, Executive Director
Fred T. Korematsu Center for Law and Equality