Update: Ban on Registering “Disparaging” Trademarks Unconstitutional

June 21, 2017  |  By: Jennifer Borek, Esq.

In a unanimous opinion based on differing rationale, the Supreme Court held that the federal prohibition on registering “disparaging” trademarks is unconstitutional.  (Matal v. Tam, No. 15-1293).  Four of the Justices fully agreed with Justice Alito’s opinion and four other Justices, led by Justice Kennedy, filed a separate opinion agreeing that the prohibition is unconstitutional, but citing a different basis.  (Newly confirmed Justice Gorsuch did not participate).

This case arose when a dance-rock band applied to the U.S. Patent and Trademark Office (PTO) for federal trademark registration of the band’s name “The Slants.” The members of the band are Asian-American and chose their name - a derogatory term for a person of Asian descent - to “help ‘reclaim’ the term and drain its denigrating force.” The PTO denied the application pursuant to the Lanham Act, which prohibits registration of trademarks that may “disparage . . . or bring . . .  in contemp[t] or disrepute” any “persons, living or dead.”  On appeal, the Federal Circuit held this provision of the Lanham Act unconstitutional as against the First Amendment’s Free Speech Clause. (See Litigation Law Blog’s previous post about the Federal Circuit’s decision from December 23, 2015 and The Supreme Court’s Decision to Review the Case from September 29, 2016)

Upholding the Federal Circuit’s decision, the Supreme Court reiterated that “trademarks are private, not public speech,” and that “public expression may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” The Court found that the government engaged in “viewpoint discrimination,” and that the expressive components of trademarks prohibit viewing them as “commercial speech.”  Scrutinizing the restriction in the Act, the Supreme Court held that the clause was not sufficiently narrowly drawn, i.e., it restricts more than just “harmful” discrimination, but also anything that disparages any person, such as, the phrase “Down with racists.”  Per Justice Alito, the restriction “is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary. . . ,” and violates the First Amendment’s guarantee of Free Speech.

This landmark decision has important implications for the Washington Redskin’s Case. In 2014, The PTO ordered cancellation of the REDSKINS mark under the disparagement clause for its offensiveness to Native Americans. The team’s appeal to the Fourth Circuit was stayed pending the outcome of this case.

For more information on trademark registration or the implications of Matal v. Tam, please contact Kathleen Barnett Einhorn, Esq., Director of the firm’s Complex Commercial Litigation Group at keinhorn@genovaburns.com, or Jennifer Borek, Esq., a Partner in the Complex Commercial Litigation Group at jborek@genovaburns.com.

Tags: TrademarkFirst AmendmentRedskinsGenova BurnsGenova Burns LLCJennifer BorekFirst Amendment RightsWashington RedskinsFree SpeechMatal v. Tam