In dispute over denial of trademark application of Asian-American rock band called “The Slants,” Supreme Court finds provision of Lanham Act barring federal registration of disparaging trademarks unconstitutional because it violates Free Speech Clause of First Amendment.

Simon Shiao Tam, the frontman for an Asian-American rock band called “The Slants,” applied to trademark the band’s name in 2011. Tam named his band “The Slants” in order to “reclaim” and “take ownership” of Asian stereotypes. The U.S. Patent and Trademark Office refused to register Tam’s mark under Section 2(a) of the Lanham Act, which permits the rejection of marks that “may disparage” an identifiable group of Americans, finding that “even though Tam may have chosen the mark to ‘reappropriate the disparaging term,’ a substantial composite of persons of Asian descent would find the term offensive.” The Trademark Trial and Appeal Board affirmed, and Tam appealed to the U.S. Court of Appeals for the Federal Circuit. In 2015, the en banc Federal Circuit concluded that the disparagement provision of Section 2(a) was unconstitutional (read our previous summary here). The government appealed to the U.S. Supreme Court.

Justice Samuel A. Alito Jr. delivered the unanimous judgment of the high court that the “disparagement clause” of Section 2(a) of the Lanham Act is unconstitutional under the Free Speech Clause of the First Amendment. The judgment stated, “Speech may not be banned on the ground that it expresses ideas that offend.”

The high court first addressed — and disagreed with — Tam’s argument that the disparagement clause does not prohibit marks that are offensive to racial or ethnic groups because these groups are not “persons” under the statute, concluding that the plain language of the statute unambiguously included racial or ethnic groups in its scope. The Court also found unconvincing Tam’s argument that the USPTO’s historical acceptance of marks that disparaged African-Americans and Native Americans proved that the disparagement clause does not extend to racial or ethnic groups. Rather, the Court viewed these other marks as evidence of factors such as “the regrettable attitudes and sensibilities of the time” when those marks were registered, a “haphazard record of enforcement” and the subjective nature of the test for disparagement.

Dispensing with Tam’s statutory argument, the high court proceeded to the constitutional issue under the First Amendment, focusing on the government’s argument that trademarks are government speech rather than private speech. While the First Amendment prohibits the government from promoting or penalizing certain viewpoints in how it regulates private speech, the government can restrict viewpoints in its own actions and policy choices. The high court strongly disagreed with the idea of extending the government speech doctrine to trademarks, however, noting that the content of trademarks is created by private individuals rather than the government and, except under Section 2(a), the review of a trademark application is viewpoint-neutral. If federal registration turns a trademark into government speech, then “the Federal Government is babbling prodigiously and incoherently,” the high court said, pointing out that there are over 2 million federally registered trademarks and many make statements that contradict each other. It also warned that if trademark registration creates government speech, then this doctrine could extend to other systems of government registration — including copyright — an idea the Court found “worrisome.”

In portions of his opinion commanding less than a majority, Justice Alito addressed several other issues raised by the government. He distinguished cases in which the government favored certain viewpoints by providing subsidies such as grants to artists, funding to libraries and “funds to private parties for family planning services,” finding these cases inapposite since the government does not provide money to trademark applicants, but instead requires applicants to pay a fee to register. The government also argued that trademarks are commercial speech subject to a lower standard of scrutiny than noncommercial speech. Without deciding the issue, Justice Alito wrote that even if trademarks are commercial speech, the disparagement clause fails the appropriate test since it is not “narrowly drawn.”

Justice Anthony M. Kennedy wrote a concurrence, stating that commercial speech is subject to the same level of “heightened scrutiny” as noncommercial speech when the government attempts to regulate specific viewpoints.