Supreme Court Rules “Disparagement Clause” of the Lanham Act Unconstitutional

On June 19, 2017, the Supreme Court ruled that the 70-year-old federal ban on offensive trademarks is unconstitutional.

The “disparagement clause” of the Lanham Act prohibits registration of trademarks “which may disparage . . . or bring . . . into contempt or disrepute” any “persons, living or dead, institutions, beliefs, or national symbols.”  Simon Tam sought federal trademark registration for THE SLANTS, the name of his Portland-based Asian-American band.  The name, according to Tam, was an attempt to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity.  Citing the disparagement clause, the Examining Attorney refused registration on the basis that “there is . . . a substantial composite of persons who find the term in the applied-for mark offensive.”  Tam appealed, and the Federal Circuit reversed, finding the disparagement clause unconstitutional under the First Amendment.  The government appealed, and the Supreme Court has now affirmed.

Writing for all eight participating justices, Justice Alito wrote that the disparagement clause “offends a bedrock First Amendment principle:  Speech may not be banned on the ground that it expresses ideas that offend.”  The Court also unanimously rejected the government’s argument that trademarks are government, and not private, speech.  Noting the various “unseemly” and “contradictory” views expressed by the millions of federally registered trademarks, the Court stated: “If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”

No dissenting opinions were filed.  Though the justices split in their opinions regarding the government’s other First Amendment arguments, the pluralities fundamentally agreed that the disparagement clause constitutes viewpoint discrimination.  Justice Alito, joined by three other justices, wrote:  “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”  Similarly, Justice Kennedy’s concurrence stated:  “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.  The First Amendment does not entrust that power to the government’s benevolence.  Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”

The Court’s decision is good news for the Washington Redskins.  The team’s six “Redskins” marks were cancelled in 2014 after a decades-long legal battle brought by Native Americans, who argued that the team’s name is a racial epithet.  In 2015, a district court affirmed the cancellation, and the team’s appeal at the Fourth Circuit has been on hold pending resolution of the underlying constitutional dispute in the Tam case.

The Court’s opinion will likely reverberate further.  In a footnote, the Supreme Court observed how the Trademark Trial and Appeal Board has previously acknowledged that the guidelines for determining whether a mark is scandalous are likewise vague and highly subjective.  Also, in a case currently before the Federal Circuit (In re Brunetti), the USPTO conceded in a letter brief that the Federal Circuit’s reasoning in In re Tam also requires invalidation of the Lanham Act’s prohibition on the registration of scandalous and immoral marks.  These signs almost certainly foretell the doom of the scandalous/immoral clause of Section 2(a).

The case is Matal v. Tam, Case No. 15-1293 (June 19, 2017).