On June 17, 2017, the Supreme Court struck down the disparagement clause of Section 2(a) of the Lanham Act on the grounds that it violates the First Amendment of the Constitution. Matal v. Tam, 582 U.S. ____ (2017).

The disparagement clause of Section 2(a) has historically prohibited the United States Patent and Trademark Office from registering trademarks that may “disparage...or bring...into contempt or disrepute” any “persons, living or dead, institutions, beliefs, or national symbols.” 15 USC § 1052(a). Specifically, the Supreme Court found the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Supreme Court’s decision upends decades of lower court precedent that upheld the provision that prevented countless trademarks from being registered due to them being disparaging to ethnic or religious groups. For example, the decision will likely be a game changer for Blackhorse v. Pro-Football, Inc., 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015) (the “Redskins Trademark” case), where the Washington Redskins have fought against the disparagement clause to preserve their REDSKINS trademarks from cancellation proceedings brought by Native Americans. Further along, we will likely see the USPTO allowing the registration of disparaging marks.

Background of the Case

The genesis of the case was a trademark application filed by a band comprised of Asian Americans calling themselves THE SLANTS, as a statement to “reclaim” the phrase. The USPTO refused the application under Section 2(a), finding a “substantial composite of persons” would find the term in the applied-for mark offensive.

Tam appealed the trademark examiner’s refusal to register with the Trademark Trial and Appeal Board but to no avail. He then appealed the TTAB’s affirmance of the refusal to register with the Federal Circuit. The Federal Circuit initially affirmed the TTAB refusal, finding that substantial evidence supported a finding that a substantial composite of people of Asian descent would find the mark disparaging. A week after affirming the refusal, however, the Federal Circuit announced it would revisit the issue. Ultimately, the Federal Circuit reversed the TTAB refusal to register, holding that the disparagement clause was facially unconstitutional under the First Amendment’s Free Speech Clause. The Government appealed the Federal Circuit decision.

SCOTUS Analysis

On appeal, the Supreme Court reviewed the constitutionality of the Lanham Act’s disparagement clause vis-à-vis the First Amendment’s Free Speech Clause. The Free Speech Clause generally prohibits Congress and other government entities from regulating speech in ways that favor some viewpoints or ideas at the expense of others, unless such speech is deemed “government speech.” The Supreme Court however, disagreed, stating that the Federal Government does not “dream up” marks submitted for registration and thus, trademarks are not government speech.

Next, the Government also argued that the instant case is analogous to subsidized-speech cases where the Supreme Court has upheld the constitutionality of government programs that subsidized speech expressing a particular viewpoint. But, the Supreme Court found that these cases involved government programs where the government would issue subsidies, whereas the federal registration of a trademark involves the inverse – it does not pay money to the parties seeking registration for the mark but receives fees. Thus, the Supreme Court refused to rely on the subsidized speech line of cases.

Finally, the Government argued that the Supreme Court should sustain the disparagement clause under a new doctrine that applied to “government-program” cases, citing cases involving a public employer’s collection of union dues from employees. But, the Supreme Court found that such cases were “far removed” from trademark registration and did not apply in this context.

Although the Supreme Court held that trademarks do not constitute “government speech,” the Supreme Court declined to reach the question of whether trademarks constitute commercial speech.

The Supreme Court therefore held that because the disparagement clause reflects the Government’s disapproval of a subset of messages it finds offensive, it is the essence of viewpoint discrimination and as such, violates the Free Speech Clause of the First Amendment.

Implications of the Case

While this case was presented from the Applicants’ unique position, the implications of the decision could be something quite more alarming to our sensibilities. Examples of previous trademarks that had been denied registration on the basis that they may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols, pursuant to the disparagement clause include (1) DON’T BE A WET BACK (2) STOP THE ISLAMISATION OF AMERICA (3) DEMOCRATS SHOULDN’T BREED, and (4) HAVE YOU HEARD THAT SATAN IS A REPUBLICAN. All of these could now be registered trademarks.

Time will tell how this plays out but this decision will certainly impact the Redskins Trademark case, and, possibly lead to the invalidation of other similar Section 2(a) provisions such as the prohibition against the registration of scandalous and immoral marks.