Supreme Court disparages ban on offensive trademarks

December 13, 2017
Patterson Thuente IP

What’s offensive is often in the eye of the beholder. Where federal trademark registration is sought, this has long meant that registration could be denied if the mark was considered disparaging. Now, in a landmark 8-0 decision in Matal v. Tam, the U.S. Supreme Court has struck down the so-called “disparagement clause” in federal trademark law, opening the door to the registration of marks that may have been rejected as offensive in the past.

Band name rocks the trademark world

The lead singer of the Asian-American dance-rock band “The Slants” named the band to “reclaim” and “take ownership” of Asian stereotypes. It takes inspiration for its lyrics from childhood slurs and mocking nursery rhymes; its albums include “The Yellow Album” and “Slanted Eyes, Slanted Hearts.”

The singer filed an application to register the mark The Slants, but an examiner from the U.S. Patent and Trademark Office (USPTO) refused registration under the Lanham Act’s disparagement clause. The clause prohibits the registration of marks that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ….”

The Trademark Trial and Appeal Board affirmed the refusal. However, the Federal Circuit Court of Appeals found that the disparagement clause violated the Free Speech Clause of the First Amendment, and was thus unconstitutional.

Government speech argument shut down

On appeal to the Supreme Court, the federal government argued that the registration of marks under the Lanham Act makes trademarks government speech, which isn’t subject to the Free Speech Clause. Thus, it can regulate them based on their content or viewpoint.

The Court disagreed, finding it “far-fetched” to suggest a registered mark is government speech. If registration makes the mark government speech, it said, the government “is babbling prodigiously and incoherently.” What, the Court wondered, does the government have in mind when it advises Americans to “Just do it” (Nike’s trademark) or “Have it your way” (Burger King)?

Moreover, the USPTO doesn’t create or edit marks. If a mark satisfies the Lanham Act’s viewpoint-neutral requirements, registration is mandatory. The USPTO has also made it clear that registration doesn’t represent government approval of a mark. Further, once a mark is registered, the USPTO can’t remove it from the register unless a party moves for cancellation, the registration expires or the Federal Trade Commission initiates proceedings.

Subsidies not found

The high court also shot down the government’s assertion that the case was governed by previous cases where it upheld the constitutionality of government programs that subsidized speech expressing a particular viewpoint. All of those cases involved cash subsidies or their equivalent.

The USPTO, on the other hand, doesn’t pay money to parties seeking trademark registration. To the contrary, it requires the payment of fees to apply for and maintain registration.

Proposed new doctrine rejected

The government also urged the Supreme Court to adopt a “government-program” doctrine that would permit some content- and speaker-based restrictions in government programs. The doctrine would merge the Court’s government-speech cases and subsidy cases to construct a broader doctrine applicable to trademark registration.

According to the Court, cases in which the government creates a limited public forum for private speech are potentially more appropriate — and, even in those cases, viewpoint discrimination is forbidden. By denying registration to any mark that’s offensive to a substantial percentage of the members of any group, the Court found, the disparagement clause discriminates on the basis of viewpoint. “Giving offense is a viewpoint,” it explained.

A clear winner

The ultimate impact of this case remains to be seen, but it’s certainly good news, not just for The Slants but also for the Washington Redskins. A federal judge canceled the National Football League team’s trademark registrations in 2015 based on the disparagement clause. The team had appealed the ruling, but considering the Supreme Court’s decision, both the Department of Justice and the plaintiffs in that case have asked the appellate court to end the case, as the marks can no longer be challenged as offensive. •

Matal v. Tam, No. 15-1293, June 19, 2017 (U.S.)


Court punts on commercial speech question

The parties in Matal v. Tam (see main article) also argued over whether trademarks are commercial speech and, therefore, entitled to less protection from regulation (for example, the disparagement clause) under the First Amendment. The government claimed that trademarks’ central purposes are commercial. Tam countered that many trademarks have an expressive component that goes beyond simply identifying the source of a product or service.

The U.S. Supreme Court determined that it needn’t resolve the issue for purposes of this case — because the disparagement clause would fail even under the relaxed standard that applies to the review of restrictions on commercial speech for constitutionality. Under that standard, a restriction must serve “a substantial interest” and be “narrowly drawn” to be upheld.

The Court found that the government’s “purported interest” of preventing speech expressing ideas that offend “strikes at the heart of the First Amendment.” And the disparagement clause isn’t narrowly drawn because it applies to any trademark that disparages any person, group or institution.

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