By: Rachel B. Kinney

 On June 19, 2017, the Supreme Court in Matal v. Tam, 582 U.S.___ (2017) unanimously invalidated as unconstitutional the 70-plus year-old provision of Section 2(a) of the Lanham Act that bans federal registration of trademarks “which may disparage . . . persons living, or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”  The Court held that this “disparagement” clause of the Lanham Act “violates the Free Speech Clause of the Frist Amendment” and “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”  Id.

This case involves Simon Tam, lead singer of an Asian-American rock band, who sought federal registration of the mark THE SLANTS.  The Court described Mr. Tam as believing “that by taking that slur as the name of their group, they will help to ‘reclaim’ the term and drain its denigrating force.”  Id. at 1.  The Patent and Trademark Office (“PTO”) refused registration pursuant to Section 2(a) of the Lanham Act, finding the mark disparaging to persons of Asian descent.  After unsuccessfully contesting the denial before the PTO’s Trademark Trial and Appeal Board, Mr. Tam appealed.  The en banc Federal Circuit found the Lanham Act’s disparagement clause facially unconstitutional under the First Amendment’s Free Speech clause, which prohibits the government from regulating speech in ways that favor some viewpoints at the expense of others.  Id. at 7, 13.  The Supreme Court granted the Government’s petition for certiorari to decide “whether the disparagement clause ‘is facially invalid under the Free Speech Clause of the First Amendment.’”  Id. at 8.

The Court affirmed the Federal Circuit, and rejected the Government’s contentions “(1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new government-program doctrine.”  Id. at 12.

The Court observed that it has long held that the First Amendment does not regulate government speech.  Id. at 12-13.  But to prevent the risk of government “silenc[ing] or muffl[ling] the expression of disfavored viewpoints,” the Court exercises “great caution” before extending its government-speech precedents.  Id  at 14.  The Court specifically held that “trademarks are private, not government, speech.”  Id. at 18.  The Court commented that “it is far-fetched to suggest that the content of a registered mark is government speech,” since the Government does not “dream up” or “edit marks submitted for registration,” and the PTO is not authorized to unilaterally remove a mark from the register.  Id. at 14.  The Court further explained that “none of [its] government speech cases even remotely supports the idea that registered trademarks are government speech.”  Id. at 16.

The Court quickly rejected the Government’s “government subsidy” and “government program” arguments.  The Court noted that “the federal registration of a trademark is nothing like the programs at issue” in cases upholding the constitutionality of government programs that subsidized speech expressing a particular viewpoint.  It held that the “disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted” because “the disparagement clause discriminates on the bases of ‘viewpoint,’” which the First Amendment forbids.  Id. at 22-23. The Court explained that the disparagement clause “denies registration to any mark that is offensive to a substantial percentage of the members of any group.  That is viewpoint discrimination in the sense relevant here: Giving offense is a viewpoint.”  Id. at 22.

Tam includes two concurring opinions, one by Justice Kennedy in which he further wrote that “the First Amendment’s protections against viewpoint discrimination,” and another by Justice Thomas, which advocated that strict scrutiny should apply when the government seeks to restrict speech.

This case is a strong indication of the Court’s reluctance to allow government censorship, and the ruling has several likely implications.  Although the Court did not directly address Section 2(a)’s provision barring registration of “immoral or scandalous” marks, given the Court’s invalidation of Section 2(a)’s disparagement clause, practitioners and the PTO are likely to reevaluate the effect of the Lanham Act’s ban on registration of “immoral or scandalous” marks, among other things.

For “live” trademark applications currently facing a disparagement refusal, the PTO will very likely allow those marks to proceed to publication.  Although the PTO will likely see an influx of trademark applications for “offensive” or “disparaging” marks, it is doubtful that the marketplace will actually be flooded with marks that are hateful or offensive.  Most brands do not use nor are inclined to use marks that are likely to offend. 

As for Simon Tam and The Slants, they are not the only brand celebrating the Court’s ruling.  The Court’s decision is also a victory for professional football team Washington Redskins whose appeal of the cancellation of its REDSKINS trademark registrations has been stayed pending the Court’s decision in Tam.