Supreme Court Holds that the First Amendment Permits Registration of Disparaging Trademarks

An Asian-American dance-rock band, “The Slants,” has the right to register its band’s name as a trademark, the Supreme Court ruled on June 19, 2017, in a long-awaited decision. In Matal v. Tam, the Court held that the federal trademark statute violates the First Amendment insofar as it serves to ban offensive speech.

The band, whose members are Asian-Americans, adopted the term “slants” – a derogatory term for persons of Asian descent – as their band’s name in an effort to reclaim the term and drain it of its denigrating force. Simon Tam, the band’s lead singer, filed an application to register “The Slants” as a trademark with the United States Patent and Trademark Office (USPTO). The USPTO rejected the application, arguing that that the Lanham Act – the federal statute governing trademarks – prohibits the registration of any trademark that may disparage any person or bring them into contempt or disrepute. 15 U.S.C. S 1052(a). This provision has long been used by the USPTO to deny trademark applications for offensive trademarks, even if, as in Tam’s case, a trademark applicant is a member of the group purportedly disparaged. Tam appealed to the Trademark Trial and Appeal Board but lost, so he filed suit in federal court. The Federal Circuit found the Lanham Act’s prohibition on the registration of disparaging marks to be facially unconstitutional, and the case made its way to the Supreme Court. The case received considerable attention, in part because the Washington Redskins had recently seen trademark registration cancelled pursuant to the same provision of the Lanham Act.

The Court unanimously struck down the provision of the Lanham Act as unconstitutional, though the justices were very much split in their reasoning. Justice Gorsuch did not participate in the decision. At the core of the Court’s decision is the First Amendment’s “bedrock principle” that speech cannot be banned because it is offensive. To overcome First Amendment concerns, the USPTO argued that registered trademarks constitute government speech. The First Amendment does not prohibit the government from regulating its own speech, the USPTO argued, so it could choose which marks to register and which marks to reject consistent with the Lanham Act. But in delivering the Court’s judgment, Justice Alito rejected this argument. The USPTO does not exercise creative control over trademarks; rather, trademarks are the expressive property of private parties. The USPTO’s acceptance and registration of marks does not transform those marks into government speech or constitute governmental endorsements of their content. Because the First Amendment restricts the government’s ability to regulate non-governmental speech, the applicable provision of the Lanham Act violated the First Amendment by permitting the government to do just that in rejecting The Slants’ trademark application. The Court refused to see the Lanham Act’s overly broad prohibition as anything other than a governmental attempt to prevent offensive speech, which “strikes at the heart” of the First Amendment. Other justices concurred with the Court’s judgment but offered differing rationales. Justices Kennedy, Ginsburg, Sotomayor, and Kagan found the Lanham Act’s prohibition to permit the government to exercise viewpoint discrimination.

For the parties, the immediate result of the decision is that the USPTO will now register “The Slants” as a trademark. Federal registration provides many important benefits that the band will now enjoy. The decision has other consequences as well. As previously noted, the Washington Redskins saw the cancellation of several trademarks on the basis of the provision now ruled unconstitutional. This ruling will support the organization’s position going forward as it continues to press its claim to these marks. In a broader context, the USPTO should see an influx of trademark applications for marks that were either previously denied registration under this provision of the Lanham Act or for which registration was never even pursued. This flood of otherwise disparaging or offensive trademarks will invariably lead to press coverage and disputes. The ruling itself is a big albeit unsurprising win for First Amendment advocates and may give way to challenges to anti-disparagement provisions in similar state trademark laws. At the same time, expect to see more applicants follow The Slants by seeking trademark registrations to try to reclaim and delegitimize offensive language. It remains to be seen whether this strategy may become an effective vehicle for such applicants seeking social change through legal means. In any event, the case undoubtedly spurred important conversations about the relationship between the law, social norms, and language. These conversations will re-ignite when the Washington Redskins try to parlay this decision in support of their attempts to use and protect their team’s name.

Nathan A. Kostelnik