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Matel v. Tam: The United States Supreme Court Expands The Scope Of Trademark Law

By Leigh S. Willey

The United States Supreme Court has recently uprooted nearly one hundred years of trademark law, in its ruling in Matal v. Tam, Case No. 15-1293, deciding that a federal statute prohibiting registration of offensive or disparaging trademarks is unconstitutional.

Simon Tam, the lead singer of the Asian-American rock band, The Slants, filed the lawsuit after the United States Patent and Trademark Office refused to register the band’s name as a trademark because it violated the “disparagement clause” of the Lanham Act. “Slants” is a derogatory label referring to persons of Asian descent. In calling themselves “The Slants,” Tam and his band members, had sought to reclaim the word and dilute its offensive meaning.

The Lanham Act is the federal law that governs trademarks, and it prohibits registration of trademarks “which may disparage . . . persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.” The PTO had relied on the “disparagement clause” when, in 2014, it cancelled the Washington Redskins’ trademark, essentially gutting nearly 50 years of federal trademark protection for the professional football team.

The issue before the Supreme Court was whether the disparagement clause violates the Free Speech Clause of the First Amendment. The PTO argued that trademarks are government speech, not private speech, and thus, not subject to strict First Amendment protection. The Court disagreed, calling the PTO’s suggestion “far-fetched.”  The Court noted that the PTO does not create or edit the marks submitted for registration. If a proposed mark satisfies the Lanham Act’s requirements (e.g., use in commerce), registration is mandatory. And once a mark is registered, the PTO cannot remove the mark from the register unless the registration expires or the mark is cancelled.  The Court ruled,

[i]f federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.    

The Court then ruled that the “disparagement clause” did not pass constitutional muster even under the standard of relaxed scrutiny applied to commercial speech. Under this standard, “[t]he regulatory technique may extend only as far as the interest it serves.”

The Court acknowledged that while the “disparagement clause” may serve two very important interests—namely, preventing offensive speech and protecting the orderly flow of commerce—the clause is not narrowly drawn to keep out offensively discriminating trademarks. Rather, the clause applies to any trademark that disparages any person, any group or any institution. In this regard, “[i]t is not an anti-discrimination clause; it is a happy-talk clause,” and it goes well beyond the interests it is purportedly intended to serve.  

“[The disparagement clause] violates the Free Speech Clause of the First Amendment,” Justice Alito wrote. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The ruling is undoubtedly a victory for staunch defenders of the First Amendment. It may also invite the registration of hateful and invidious marks that, unlike The Slants, are purposely used to discriminate and offend.