​​After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

“Let the Right One In”

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a)

Trademark law in the United States is rooted in common law, with individuals and entities earning trademark protection under state law through the use of their marks in commerce, without the need for registration. In 1946, Congress harmonized trademark law throughout the United States by passing the Lanham Act, which granted federal, nationwide trademark protection on top of existing state-based rights, if the trademark owner applied for and obtained a federal registration for its mark.

Section 2(a) of the Lanham Act states in relevant part that the U.S. Patent and Trademark Office may prohibit the registration of marks that may “disparage… or bring… into contempt, or disrepute” any “persons, living or dead, institutions, beliefs or national symbols.” Section 2(a) has been the subject of controversy and lawsuits in recent years. In 2014, the Trademark Office used Section 2(a) to cancel federal trademark registrations in six marks for a Washington football team, finding that the REDSKINS mark disparaged Native Americans. On appeal, the Fourth Circuit stayed the matter pending the Supreme Court’s resolution of the Tam case. Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D.Va. 2015), appeal docketed, No. 15-1874 (4th Cir. Aug. 6, 2015).

“The Band Who Must Not Be Named [or Registered]”

Background on the THE SLANTS decisions

In 2006, Simon Shiao Tam founded the all-Asian American dance-rock band “The Slants,” and several years later he applied to federally register THE SLANTS as a trademark for his band with the Trademark Office in 2011. The Trademark Office denied Mr. Tam’s registration application under Section 2(a), finding that the mark THE SLANTS as used for an all-Asian rock band would disparage a substantial composite of persons of Asian descent. The Trademark Office’s determination was affirmed on appeal before the Trademark Trial and Appeal Board, even though Mr. Tam defended his band’s use of the name, stating that his intention was not to disparage Asians but to reclaim and take ownership of that term. Mr. Tam then appealed this determination to the Federal Circuit.

The initial panel of the Federal Circuit affirmed the TTAB’s decision to refuse Mr. Tam’s federal registration. In re Simon Shiao Tam, 785 F.3d 567 (Fed. Cir. 2015). But one of the panelists, Judge Kimberly Ann Moore, wrote separately to make the case that Section 2(a)’s prohibition on disparaging registrations was unconstitutional. The Federal Circuit then granted en banc review on the question of Section 2(a)’s constitutionality. Sitting en banc, the Federal Circuit held by a 9-3 majority that prohibiting the federal registration of disparaging marks violates the First Amendment. In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc).

“Something Slanted This Way Comes”

Supreme Court Decision—Government Speech vs. Private Speech

The Tam Court first considered the argument that trademarks are government speech, as opposed to private speech. The Free Speech Clause of the First Amendment prohibits governmental entities from abridging the speech rights of private persons, but it does not regulate government speech or require the government to maintain viewpoint neutrality. On this question, the Court unanimously agreed that federal registration of a mark is not government speech or even government approval of a mark. Trademarks, the Tam Court found, have not been used by governments historically to convey state messages; they are not closely identified in the public mind with governments, but rather with private enterprises; and the government does not maintain any direct control over the views expressed in marks. And given the wide variety, and even opposing viewpoints offered by registered marks, Justice Alito quipped that to see registered marks as government speech, one would have to think that “the Federal Government is babbling prodigiously and incoherently.”

The Court’s decision also warned about the “dangerous” implications of expanding the government speech doctrine. “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.” These concerns, in the Tam Court’s view, become particularly acute if applied to other registration-based regimes, such as copyright: “If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?” And, relying heavily on the amicus submission by Pro-Football, Inc., the Court further undermined the government speech rationale by recounting the history of arbitrary and inconsistent enforcement of Section 2(a)’s bar on disparaging marks by trademark examiners.

Concurring in the judgment, Justice Anthony Kennedy, joined by Justice Ruth Bader Ginsburg, Justice Sonia Sotomayor, and Justice Elena Kagan, agreed that trademarks are not government speech. These four justices also agreed that the disparagement bar of Section 2(a), which allows an applicant to register “a positive or benign mark but not a derogatory one,” was the very “essence of viewpoint discrimination.” By identifying viewpoint discrimination as “a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny,” Justice Kennedy found the disparagement provision unconstitutional and concluded that there was no reason to consider the parties’ remaining arguments.

“I Wanna Break You Down”

Supreme Court Decision—Additional Arguments Raised by the Government

Only four justices of the Tam Court—Justice Alito, Chief Justice John G. Roberts, Justice Clarence Thomas, and Justice Stephen Breyer—even found it necessary to consider the remaining arguments that the Federal Government advanced to salvage the constitutionality of Section 2(a)’s disparagement bar. While Justice Kennedy’s concurrence generally supported the Court’s primary opinion on these points, it remains to be seen whether the positions staked out in Justice Alito’s main opinion have much precedential or persuasive weight.

Up first was the argument that trademarks are a form of government subsidy. In support of this argument, the Federal Government relied on cases finding that, while the government may not deny a benefit to a person on a basis that infringes that person’s freedom of speech, it need not subsidize speech it disagrees with a gratuitous benefit. Justice Alito rejected this position outright, finding that trademarks are not a subsidy and pointing out that applicants must pay the PTO both to register marks and to maintain them.

Justice Alito’s opinion also rejected the proposal for a “new” doctrine that tried to merge the subsidy and government speech arguments. The Federal Government argued that the inability of Mr. Tam to obtain a federal registration in THE SLANTS because of Section 2(a) would not prevent Mr. Tam from continuing to use the name “The Slants” in advertising, in contracts, and even as an unregistered mark in a trademark action. Section 2(a), the Federal Government asserted, does not silence Mr. Tam’s speech; it just governs whether Mr. Tam is eligible for certain benefits under the Lanham Act. Justice Alito found this argument had no merit, as the First Amendment does not allow the government to condition benefits based on the “viewpoint” that an applicant advances.

Finally, the justices offered some insight on the Federal Government’s argument that trademark registrations are commercial speech, which would make them subject to the relaxed scrutiny standards of Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980). Justice Alito wrote that the Court need not resolve the issue, as the disparagement bar of Section 2(a) could not satisfy even the relaxed scrutiny under Central Hudson: “A simple answer to this argument is that the disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination. . . . It is not an anti-discrimination clause; it is a happy-talk clause.” Justice Kennedy’s concurrence dismissed the commercial speech argument as a distraction, suggesting that the existence of any viewpoint discrimination automatically triggers heightened scrutiny.

“Slants! Slants! Revolution”

Takeaways

The Tam decision reflects the Court’s willingness to strike down laws—even long-standing ones such as Section 2(a)’s disparagement bar—that discriminate based on viewpoint. This could have big implications for many registration-based regimes that give governmental personnel discretion to refuse or reject applications. The Tam Court itself mentioned how troubling it would be if the federal government could engage in similar viewpoint-based discrimination for copyright applications. Accordingly, though the Tam Court considered only the constitutionality of the Section 2(a)’s disparagement bar, it is unlikely that other limitations on registrability under Section 2(a)—for instance, its prohibition on immoral or scandalous registrations—would survive constitutional scrutiny after the Tam decision. Even more, the viewpoint discrimination rationale of Tam could undo other reasons for denying registration, like the tarnishment prohibition under dilution law or provide a basis for acceptance of the parody defense.

The Court’s ruling in Tam could also have wide-reaching effects in the patent realm. Professor Sarah Burstein notes that Section 1504.01(3) of the Manual of Patent Examining Procedure directs the patent examiners to reject design patent applications that “disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions.” Similarly, Section 608 of MPEP instructs patent examiners to object to any patent application that uses “language that could be deemed offensive to any race, religion, sex, ethnic group, or nationality… [or] the inclusion in application drawings of any depictions or caricatures that might reasonably be considered offensive to any group… .” These provisions are likely unconstitutional under the reasoning in Matal v. Tam.

The Tam decision also demonstrates the difficulties that arise when the government tries to stand as an obstacle to associations that grow organically between brands and customers in the marketplace. Notwithstanding governmental intervention, those associations will continue to grow (or not), based on how much goodwill the owner of a mark is able to generate among members of its fan base (if any)—just as Mr. Tam has continued to generate goodwill around his band “The Slants” by virtue of the public lawsuit over his inability to obtain a registration in the mark THE SLANTS.

Some procedures, such as registration in the trademark context, are ill-suited as instruments for achieving policy outcomes and setting social norms. Indeed, as the facts of Tam show, such tools of control are often not sensitive enough to distinguish between trademark applicants that seek to celebrate or reclaim a term, and those who are recklessly indifferent about a mark’s disparaging impact. In any case, despite the best intentions of those administering, the risk of viewpoint discrimination under a registration regime enforcing such restrictions is too great for the First Amendment to tolerate.

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