OFFENSE INTENDED: A 2017 Supreme Court decision extends trademark protection to 'coarser' marks.

• Author: Bagley, Judd
• Position: Technology

In July of 2012, an examiner in the federal Patent and Trademark Office (PTO) received an application for trademark registration relating to a device using distillation techniques to purify water. The name the inventor, Utahn Ron Francom, lightheartedly gave his distillery was "Mormon Whiskey," and in filing his registration he hoped to enjoy the many protections a trademark registration affords the registered mark.

Francom was disappointed to learn, however, that his application was rejected, based on a set of federal statutes that prevented the PTO from extending the government's imprimatur to marks that "disparage ... or bring ... into contempt or disrepute" any "persons, living or dead."

Those statutes comprise what came to be known as the Disparagement Clause.

Meanwhile, three weeks after the ill-fated application for Mormon Whiskey, the same PTO received and ultimately accepted an application to register the mark Mormon Christian.

"In the case of Mormon Christian, the examiner was fine with that because it was seen as a positive statement not a negative one," says trademark attorney Nicole Deforge of Fabian Vancott. "And then, they denied the application for Mormon Whiskey because they thought it would be offensive."

The Mormon Whiskey versus Mormon Christian dichotomy would go on to serve as a canonical example of the problematic nature of the trademark office's invocation of the Disparagement Clause, and was cited in many high-profile critiques of it.

"There are rules and regulations preventing granting trademarks to immoral or scandalous subject matter, and these have historically been used by the trademark office to prevent not necessarily the use of a mark, but the granting of federal rights associated with marks that are deemed pejorative or obscene," explains Jed Hansen, a trademark attorney at Thorpe North & Western. "The rule was interpreted as applying to marks containing subject matter that is derogatory or profane, or that convention would say is offensive."

Nonetheless, in recent years, popular opposition to the government's use of the Disparagement Clause began to grow, though the arguments against it largely centered on market freedom.

In 2010, a dance-rock music band called The Slants applied to register their mark and they, too, were rejected. The basis? The term "slant" can be used to disparage persons of Asian descent. Complicating matters: the band's members are all of Asian descent.

"This is what The Slants were...