Earlier this week, a unanimous but fractured Supreme Court ruled that a controversial provision in the Lanham Act prohibiting the registration of trademarks that disparage “persons, living or dead, institutions, beliefs, or national symbols” violates the First Amendment. This decision may be most remembered for the impact it may have on the NFL’s Washington Redskins, who have been fighting disparagement clause claims against the organization’s valuable trademarks. However, First Amendment practitioners may long remember this decision for the Court’s powerful language affirming a “bedrock” First Amendment principle: “Speech may not be banned on the ground that it expresses ideas that offend.”
This case arose out of a trademark application filed by Simon Tam, the lead singer of “The Slants,” an Asian-American dance rock group that seeks to “reclaim” and “take ownership” over Asian ethnic stereotypes. The United States Patent and Trademark Office (“USPTO”) denied Tam’s application under the Lanham Act’s disparagement clause, finding that a “substantial composite of persons . . . find the [band’s name] offensive.” After exhausting his administrative remedies, Tam took the USPTO to federal court, eventually landing before an en banc panel of the United States Court of Appeals for the Federal Circuit. The Federal Circuit reversed decades of precedent interpreting the disparagement clause, holding that the Lanham Act’s prohibition on disparaging trademarks facially violated the First Amendment’s Free Speech Clause. The USPTO appealed.
Writing for the Court, Justice Alito was unanimously joined by his colleagues in affirming the judgment of the Federal Circuit. The Court also unanimously agreed that registration of a trademark does not convert the mark from private speech into government speech, rejecting an argument by the USPTO that would have subjected trademark regulations to lesser First Amendment scrutiny. The remainder of Justice Alito’s opinion rejected various USPTO arguments, reasoning that (1) granting federal trademark was not akin to subsidizing speech, (2) the clause was not protected from harsher First Amendment scrutiny as a “government program,” and (3) trademark registration standards could not be regulated as commercial speech. From this analysis, Justice Alito concluded that the disparagement clause was unconstitutional. Only three justices – Chief Justice Roberts, Justice Breyer, and Justice Thomas – joined Justice Alito in these remaining sections, limiting their precedential value.
Justice Kennedy filed a concurring opinion – joined by Justices Ginsberg, Sotomayor, and Kagan – arguing that the Court should have invalidated the disparagement clause based upon the First Amendment’s protections against viewpoint discrimination. Justice Gorsuch did not take part in this decision.
Takeaway: This decision ensures that entities seeking to promote or protect their brand through the benefits of obtaining a federal trademark will not be turned away on the basis that their proposed trademark is socially controversial. While certain key issues raised by this case are left undecided due to the four-four split in the Court’s reasoning, the Court’s unanimous agreement in the outcome and support for the First Amendment should provide a measure of comfort for those in the advertising industry who seek to break through every day noise with socially provocative material.