“Simple and Correct” or “Tremendous Damage to Minorities”? Opinion Split on Matal v. Tam Decision

The U.S. Supreme Court's decision in Matal v. Tam, which held that the Lanham Act's clause on disparagement violates freedom of speech under the First Amendment, was met with mixed reactions. While The Slants' Simon Tam praised the decision, some minority organizations expressed concern about the ruling. World Trademark Reviewcontacted Finnegan attorney Mark Sommers for his thoughts on the ruling.

Sommers said, "The court of public opinion is now the final arbiter over federally registering disparaging words and racial slurs as brand names, as SCOTUS struck down the Lanham Act’s prohibition against registering such words as trademarks under Section 2(a). In sum, the federal government’s 70-plus year tenure in making determinations of disparaging words has ended, as it amounted to viewpoint discrimination in violation of free speech. As Justice Alito penned in the majority opinion, "the proudest boast of our free speech jurisprudence is that we protect the freedom to express 'the thought that we hate'", while then labelling Section 2(a) as "not an antidiscrimination clause; it is a happy-talk clause" not so narrowly drawn to only "drive out trademarks that support invidious discrimination". Justice Kennedy’s concurring opinion debunked Section 2(a)’s claimed “viewpoint neutrality,” in noting that any subject first defined by its content and then approved based on only one particular type of comment [“a positive or benign mark but not a derogatory one”] is not viewpoint neutral. And while some may point to merchants as the ultimate winners of today’s decision under the pretext that disparaging words can now be federally registered as exclusive, proprietary trademarks, that would too hasty. After all, merchants must now commercially balance the federal ownership of source-identifying disparaging words against their inherent repugnant nature and associated public blowback and outrage—a similar balance to that which has existed under the common law in the marketplace for generations."