The decision in Matal v. Tam is a resounding reaffirmation of the First Amendment freedom of speech in a commercial context. The Supreme Court has spoken loud and clear that Section 2(a) of the Lanham Act (the non-disparagement clause) is unconstitutional. The Court held that the United States Trademark Office’s denial of registration of the trademark “The Slants” to an Asian-American rock-dance group because of the historically pejorative nature of the name directly conflicts with the constitutional ideal that speech cannot be banned simply because it expresses potentially offensive ideas. The Court affirmed the Federal Circuit’s decision that Section 2(a) engaged in viewpoint-based discrimination on the basis that giving offense is a viewpoint, and just because ideas are offensive it does not mean that the expression of ideas can be prohibited. The Court emphasized:
Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.” United States v. Schwimmer, 279 U.S. 644, 655 (1929)(Holmes, J., dissenting).
The Court tackled the argument that registered trademarks are a form of government speech (which is not governed by the Free Speech clause of the First Amendment) with the following colorful denunciation:
…[I]t is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.
For example, it trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony), “Think Different” (Apple), “Just do it” (Nike), or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”? (citations omitted)
The decision is significant because it opens the door to permit the registration of trademarks that some would consider offensive. For example, the decision is a Hail Mary pass for billion dollar commercial enterprises like the Washington Redskins, whose racially-charged marks were denied the benefits of federal registration because they were perceived to be offensive. The Washington Redskins secured their first trademark registration in 1967. In 1974, they received their first registration for the Indian-head logo. In 1992, Suzan Shown Harjo, a Native American activist, began petitioning the Trademark Board to cancel the registration, arguing that the name and logo of the team promotes negative stereotypes of Native Americans. In June 2014, the TTAB cancelled the trademark registration and in 2015, the United States District Court for the Eastern District of Virginia affirmed the cancellation. The Fourth Circuit then stayed the resulting appeal pending the outcome of the Tam case. The Supreme Court surely had the Redskins case front of mind when it ruled in the Tam case and Pro-Football, Inc., the corporate entity that owns the Washington Redskins, filed an amicus brief arguing that Section 2(a) of the Lanham Act violated the First Amendment.
Notably, with this decision the Supreme Court has rejected a provision of the Lanham Act that has been in place for decades as a generally accepted restriction against the government giving its seal of approval to trademarks that could be offensive to persons, institutions, beliefs, and national symbols. At the time it was enacted and for many years thereafter, the non-disparagement clause of Section 2(a) was viewed (by most) as a good thing and an acceptable restriction on the right to secure a federal trademark registration. Times have changed, and now it is viewed as over-reaching and unconstitutional. While Justice Alito penned the majority opinion, Matal v. Tam is one more decision in Chief Justice Roberts’ legacy of cases determining the outer boundaries of free speech.