Pixelated TM sign made from cubes, mosaic pattern

By Lauren Rucinski

The Supreme Court ruled Monday that a provision of federal trademark law banning offensive trademarks from federal registration is unconstitutional. Matal v. Tam, No. 15-1293 (U.S. June 19, 2017). The case concerned a dance rock band’s application for a federal trademark registration of the band’s name, “The Slants.” “Slants” is a derogatory term for persons of Asian descent. However, members of the band are Asian-Americans and the band believes that by taking that slur as the name of their group, they will help to “reclaim” the term and drain its denigrating force. However, the U.S. Patent and Trademark Office (“PTO”) denied the band name’s federal trademark application because the trademark was offensive.[1]

The provision of federal trademark law at issue is the “disparagement clause” and states that a trademark may be denied for federal registration on the basis that it may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 USC §1052(a). In applying the provision to a given trademark, an examiner at the PTO considers the likely meaning of the matter and whether that meaning may be disparaging to a “substantial composite” of the referenced group. The fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.[2] Relying on this provision and analysis, the Trademark Examiner rejected the band’s federal trademark registration. The band appealed to the Examiner and PTO appeals board and eventually to the US Federal Circuit Court of Appeals. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The Federal Circuit’s decision was a hodgepodge of reasoning, but ultimately found that the disparagement clause was unconstitutional. On appeal, the Supreme Court affirmed.

A unanimous court of eight of the Justices agreed that the disparagement clause violates the free speech clause of the First Amendment because it engages in viewpoint-based discrimination.[3] Viewpoint discrimination occurs when the government has singled out a subset of messages for disfavor based on the views expressed. The Court found that the disparagement provision engages in viewpoint-based discrimination because it would allow “happy-talk” or marks that promote positivity while discouraging disparaging or derogatory marks. Matal v. Tam, No. 15-1293 at 25. The Court went on to reiterate that “[g]iving offense” is a viewpoint and that the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Id. at 23 (citing Street v New York, 394 U.S. 576 (1969)).

Notably, the Court could not agree on whether trademarks are commercial speech. Commercial speech is subject to a relaxed standard of review. See Central Hudson Gas & Electric Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980). However, all Justices agreed that regardless of whether trademarks are commercial speech, the viewpoint-based discrimination necessarily invokes a heightened standard, and in any case, the disparagement provision could not pass the relaxed standard. See Justice Kennedy’s Concurring Opinion in which Justices Ginsburg, Sotomayor, and Kagan joined.

The Court also held that although the PTO is an arm of the federal government, trademarks are private, not government speech. The Court opined that the “federal government does not dream up these marks and it does not edit the marks submitted for registration.”[4] Id. at 14. Therefore, the notion that the content of a registered mark is government speech is farfetched. The Court also pointed out troublesome, practical implications of labeling a trademark as government speech. For instance, other systems of government registration could easily be characterized in the same way, namely copyright. Id. at 18.

Monday’s decision is a boost to the First Amendment and could signify broader implications. It is significant because the Court directly addressed a constitutional, First Amendment question. The case was especially watched by others seeking to protect a brand deemed offensive by the PTO such as the Washington Redskins NFL team. It is also significant because although the PTO’s ability to deny a mark based on offensiveness may be diminished if not revoked, the extent of the First Amendment’s reach into trademark law is left unanswered.

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[1] Trademark law is not strictly federal law. A federally unregistered trademark may be enforced under state common law, or if it has been registered in a state, under that state’s registration system. Louisiana’s trademark law contains similar language to the federal law shot down in this case: “A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it: (2) Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, educational institutions, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” La. R.S. § 51:212.

[2] See the Trademark Manual of Examining Procedure at https://tmep.uspto.gov/RDMS/TMEP/current.

[3] Justice Gorsuch did not participate in the decision of the case.

[4] The Court further qualified that were trademarks to be considered government speech, the government would in fact be “saying many unseemly things, “expressing contradictory views,” and “unashamedly endorsing a vast array of commercial products.” Id. at 15 (citing marks such as “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike) and “Have it Your way” (Burger King)).