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U.S. Supreme Court Drums Out the Prohibition of Disparaging Trademarks--Free Speech Rocks On

In Matal v. Tam, the United States Supreme Court struck down a provision of the Lanham Act that barred registration of disparaging trademarks, such as trademarks using racist or offensive messages. The provision is codified under 15 U.S.C. § 1052(a) and states in relevant part that one may not register a trademark that "disparage[s]...or bring[s]...into contemp[t] or disrepute" any "persons, living or dead."

The case arose when a rock band called "The Slants" (comprised of Asian-Americans) tried to register its name as a trademark at the USPTO. "Slants" is a pejorative term historically used to insult people of Asian descent. In naming itself "The Slants", the band was trying to reclaim the term in a more positive light. The USPTO denied their application under the statute above arguing "slants" is a disparaging term. A member of the band appealed the denial to the Federal Circuit, which said the prohibition violated the Free Speech Clause of the First Amendment.

In Matal v. Tam, the United States Supreme Court struck down a provision of the Lanham Act that barred registration of disparaging trademarks, such as trademarks using racist or offensive messages. The provision is codified under 15 U.S.C. § 1052(a) and states in relevant part that one may not register a trademark that "disparage[s]...or bring[s]...into contemp[t] or disrepute" any "persons, living or dead."

The case arose when a rock band called "The Slants" (comprised of Asian-Americans) tried to register its name as a trademark at the USPTO. "Slants" is a pejorative term historically used to insult people of Asian descent. In naming itself "The Slants", the band was trying to reclaim the term in a more positive light. The USPTO denied their application under the statute above arguing "slants" is a disparaging term. A member of the band appealed the denial to the Federal Circuit, which said the prohibition violated the Free Speech Clause of the First Amendment.

The Supreme Court took the case and agreed with the Federal Circuit. Aside from the ability to now register trademarks using controversial words, e.g., the REDSKINS, the Supreme Court's opinion resoundingly speaks to the very nature of a trademark. The Court unanimously declared that trademarks are private speech, not government speech. The Court explained that not only do trademarks serve as source-identifiers, but they also convey expressive messages. The Court likened the expressive content of trademarks to works receiving copyright registration. Thus, any regulation on the content of a trademark will likely have to comply with the First Amendment.

An issue left to be resolved is the level of First Amendment scrutiny to be applied to regulations on trademarks: strict scrutiny as applied to most areas of Free Speech regulations versus intermediate scrutiny as applied to commercial speech regulations. The majority opinion did not resolve this question. Justice Alito, along with Chief Justice Roberts and Justices Breyer and Thomas decided that the issue needn't be resolved in this case because the prohibition didn't even pass intermediate scrutiny. Justice Kennedy authored a concurring opinion joined by Justices Ginsburg, Kagan, and Sotomayor that called trademarks commercial speech and therefore any regulations thereof deserve intermediate scrutiny. Justice Kennedy's concurrence also stated that the prohibition of registering disparaging marks didn't pass intermediate scrutiny. Lastly, Justice Thomas wrote a concurrence that posited that any regulations on private speech, commercial, trademark, or otherwise, should receive strict scrutiny. Justice Gorsuch did not take part in the decision.

The issue of level of scrutiny probably won't be resolved any time soon because Congress would likely have to pass a new bill that implements a narrowly tailored prohibition on registration of certain trademarks. If that ever happens, we may see an encore of Tam litigation to determine the level of scrutiny appropriate for trademark regulations. Until then, the USPTO cannot prohibit registration of disparaging trademarks, and as the Court intimated, we will probably hear a chorus of politically-charged and/or controversial branding.

Justice

Part I

II

III-A

III-B

III-C

IV

Kennedy

Thomas

Alito

Author

Author

Author

Author

Author

Author

Breyer

X

X

X

X

X

X

Ginsburg

X

X

X

X

Kagan

X

X

X

X

Kennedy

X

X

X

Author

Sotomayor

X

X

X

X

Roberts

X

X

X

X

X

X

Thomas

X

X

X

X

X

Author

X signifies joining in the part of the opinion

Justice Gorsuch did not take part in this decision.

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