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June 19, 2017Client Alert

Supreme Court Rules That Prohibition on Registration of Disparaging Trademarks is Unconstitutional

The U.S. Supreme Court unanimously decided that a federal law forbidding the registration of “disparaging” trademarks violates the First Amendment Free Speech Clause because the law discriminates based on viewpoint. Matal v. Tam, No. 15-1293, 582 U.S. ___ (June 19, 2017). The decision paves the way for Asian-American musician Simon Tam to register the name of his band, THE SLANTS, and likely means that the Washington Redskins will avoid the cancellation of their registered REDSKINS marks.

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), prohibits the registration of marks “which may disparage … persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.” The U.S. Patent and Trademark Office (USPTO) denied Tam a federal trademark registration for THE SLANTS on the basis that it was disparaging to Asian-Americans. Tam argued that his mark was not offensive, but instead empowering as he reclaimed it to make a statement against Asian stereotypes. Both the USPTO and its Trademark Trial and Appeal Board disagreed, invoking the Lanham Act’s disparagement clause and citing evidence that “slants” was disparaging of Asians notwithstanding the manner in which Tam used the term. Tam appealed to the Federal Circuit, where the en banc court found the disparagement clause facially unconstitutional under the First Amendment. The Government filed a petition for certiorari before the U.S. Supreme Court, which was tasked with deciding the constitutionality of the disparagement clause.

In support of the disparagement clause, the Government argued that (1) trademarks are government speech, not private speech; (2) trademarks are a form of government subsidy; and (3) constitutionality should be determined under a “government-program” doctrine. The Supreme Court did not find these arguments persuasive, instead holding that the disparagement clause amounted to “viewpoint discrimination” in violation of the First Amendment.

“To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of the every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint,” Justice Alito wrote.

Although the high court’s decision came in Tam’s challenge to the disparagement clause, the Redskins’ federal registrations face cancellation under that same law. The Fourth Circuit suspended the Redskins’ appeal of a decision cancelling its registrations as disparaging until the Supreme Court could determine the constitutionality of the law. Based on the ruling in Tam, it appears that the Redskins’ registrations will not be canceled.

This decision may also open the doors for other First Amendment challenges to the Lanham Act. The same section of the Lanham Act that prohibited registration of disparaging marks also prohibits registrations of marks that are “immoral” or “scandalous.” Although the “immoral” and “scandalous” provisions of the law were not specifically addressed in Tam, these provisions are likely to be considered unconstitutional and also violating the First Amendment.

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