Intellectual Property Law Knowledge Center

SCOTUS Rules Trademark Disparagement Clause Unconstitutional

June 22nd, 2017

By Bridget Labutta, Esq.

The U.S. Supreme Court recently ruled that the U.S. Trademark Office’s refusal to register “The Slants” as a trademark for an Oregon-based rock band was unconstitutional. This is a case the trademark attorneys at Panitch Schwarze have been watching closely, as this landmark decision could reshape U.S. trademark law significantly.

Issued on June 19, 2017, the unanimous decision was based on the court’s opinion that trademarks are private speech, not government or commercial speech, and that free speech is guaranteed for private citizens by the First Amendment to the United States Constitution. The case has been under review since January.

Trademark Office: “The Slants” Too Disparaging to Grant

The Matal v. Tam (formerly Lee v. Tam) controversy began when the Asian-American band attempted to register “The Slants” with the U.S. Patent and Trademark Office but was refused on the grounds that “slants” is a derogatory term that disparages Asian Americans. The band’s frontman, Simon Tam, challenged the USPTO’s decision, claiming the band chose the name “in order to reclaim the term and drain its denigrating force as a derogatory term for Asian persons.”

The USPTO’s refusal was based on Section 2(a) of the Lanham Act, the 1946 statute that governs trademarks. It permits Trademark Examining Attorneys to deny registration to any trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

In December 2015, the Federal Circuit held that the disparagement clause in Section 2(a) of the 70-year-old statue was unconstitutional; the Supreme Court upheld that decision, adding, “The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech.”

Implications for Future Trademark Cases

Matal v. Tam may have implications for another high-profile trademark dispute where the Trademark Office also cited Section 2(a) of the Lanham Act in canceling the Washington Redskins trademarks. Native American activists find the “Redskins” name offensive and have lobbied for decades to persuade the team to change its name. They eventually succeeded in bringing the Redskins federal trademark registration before a federal judge, who invalidated the registration on “disparagement” grounds. The team immediately appealed, temporarily preventing cancellation of its trademark registration.

Although the Washington Redskins’ attempt to join the Tam case as a party was denied, the team filed an amicus brief supporting The Slants in their case.

The Supreme Court’s decision about potentially disparaging, offensive, or immoral trademark names may have been inevitable given that sensibilities as to what may be offensive or disparaging can and do change with the times.

Thus, it is not surprising that this particular section of the 1946 Lanham Act would be highly scrutinized in light of modern norms. Going forward, the decision will remove some statutory impediments for our clients who seek to register trademarks, as it will remove any bias or subjectivity the USPTO has heretofore had the authority to exercise over applicants’ choice of words.

If you think your trademark case has been impacted by the Supreme Court decision, contact Panitch Schwarze and its trademark attorneys for assistance at 888-291-5676.

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