The landmark case, Matal v. Tam, forever altered the innocence of the trademark landscape. The case, interestingly enough, involved a musical group wanting to trademark a seemingly disparaging mark. The mark in question was THE SLANTS, a name sometimes used to disparage people of Asian descent. However, members of the band were not trying to insult Asians, but rather were Asian-Americans trying to defang the term—much in the same way that some poor rural whites have embraced the term “redneck.”
The case centered on the disparagement clause of the Lanham Act, statute 15 U.S.C. § 1052(a). The relevant clause within section 1052(a) prohibits the registration of a trademark “[comprising] immoral, deceptive, or scandalous matter; or matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” Understandably, the US Patent and Trademark Office (USPTO) refused THE SLANTS’ application because of section 1052(a).
After the refusal, the band members challenged the constitutional validity of the refusal based on the Free Speech Clause of the First Amendment. The US Supreme Court evaluated whether the disparagement clause could survive relaxed scrutiny or survive as “government speech,” a type of government program in which some content- and speaker-based restrictions on the First Amendment are permitted. For both evaluations, the Court held that the disparagement clause of section 1052(a) violated the Free Speech Clause of the First Amendment. For those unfamiliar, the First Amendment of the U.S. Constitution prohibits Congress, and other government actors, from “abridging the Freedom of Speech;” the government may not restrict the press or restrict the rights of individuals to speak freely on most matters. However, even though the First Amendment protects speech by private citizens and organizations, the First Amendment does not regulate government speech at the federal, state, and local levels. Here, the Court was particularly worried about the government regulating viewpoint discrimination and the slippery slope that may result from upholding the disparagement clause of section 1052(a). While the Court addressed the disparagement portion of section 1052(a), the Court did not address the scandalous portion of the clause, thus leaving lower courts to determine whether Matal v. Tam struck down the entirety of section 1052(a) to cover scandalous marks or just disparaging marks.
The USPTO recognized the shortcoming of Matal v. Tam to determine whether the scandalous portion of section 1052(a) was also unconstitutional under the First Amendment. The USPTO looked1 to another case, In re Brunetti,2 to understand if it should evaluate scandalous marks similarly as disparaging marks after Matal v. Tam, i.e., scandalous marks should not be barred simply because of their inherent risqué nature. The US Court of Appeals for the Federal Circuit in In re Brunetti evaluated whether the mark FUCT could be barred under section 1052(a) because the provision prohibits the registration of “immoral…or scandalous” marks. Based on FUCT being a phonetic of a vulgar word, as well as evidence of the mark’s use in the marketplace on products containing sexual imagery, the USPTO refused the mark because of its immoral and scandalous nature.
Much like the Supreme Court in Matal v. Tam, the Federal Circuit followed the idea that trademarks “are private, not government, speech.”3 The court held that scandalous censorship by the government could unjustifiably creep into copyright law, that government registration of trademarks “does not create a limited public forum in which the government can more freely restrict speech,” and that section 1052(a)’s bar on immoral or scandalous marks does not survive intermediate scrutiny. While the court was not eager to see the market flood with vulgar marks, the restriction by the government to regulate what may be and what may not be scandalous disturbs First Amendment protections.
Matal v. Tam and In re Brunetti have blasted through any barrier for trademarking disparaging or scandalous marks. The precedent has been a major factor in two separate cases as well as giving applicants a path for bypassing rejections by the USPTO. Despite this significant change, as of April 2018, the USPTO has yet to update the Trademark Manual of Examining Procedure (TMEP) to reflect the current guidelines for reviewing scandalous and disparaging marks.4
One case, Wandering Dago, Inc. v. Destito, 879 F.3d 20 (2nd Cir. 2018), involved a food truck that sold food labeled with ethnic slurs. The New York State Office of General Services (OGS) denied the food truck’s application twice for participating as a food vendor in an annual lunch program. The US Court of Appeals found that the application of the food truck was solely denied because of the ethnic-slur branding, and thus looked to Matal v. Tam. The court determined that this was a case of viewpoint discrimination by the government when denying the applications of the food truck. Therefore, under heightened scrutiny, the prohibition of the food truck at the annual festival was a violation of the First Amendment.
Matal v. Tam also had a consequential effect on the highly publicized Pro-Football, Inc. v. Blackhorse case. In Pro-Football, Inc. v. Blackhorse, 709 F. App’x 182, 183 (4th Cir. 2018), the owner of the Washington Redskins held six federally registered trademarks for the team name and logo. The case generated a lot of discussion among the public, and the issue was polarlizing. No matter, the Fourth Circuit immediately decided to follow the Supreme Court’s ruling in Matal, and ruled that the district court judgment must be vacated and remanded to be consistent with Matal. Thus, the Washington Redskins may keep its name and logo trademarks federally protected.
In Wandering Dago, the court emphasized the Matal Court’s worry about the risk that “‘private speech could be passed off as government speech’ and ‘silence[d]’ by ‘simply affixing a government seal of approval.’” Seemingly, if a trademark or advertisement is designated private speech instead of government speech, companies will enjoy free rein to register and use any trademark that may previously have been deemed scandalous, immoral or disparaging. If, however, the court finds speech in a particular situation to be government speech or government contractor speech, then the government may be able to fully discriminate against certain viewpoints. As the Court stated in Matal, “the government is not required to maintain viewpoint neutrality on its own speech.” Matal, 137 S. Ct. at 1748.
While Matal v. Tam strictly addressed disparaging marks, challenging disparaging, scandalous and immoral marks under section 1052(a) after Wandering Dago, Inc. v. Destito, Matal v. Tam, and In re Brunetti will be exceedingly difficult. Matal v. Tam sets clear, authoritative precedent that litigants and trademark applicants can soundly depend on to preserve these marks. Going forward, it appears that litigants and applicants alike do not have to worry about the federal government restricting their right to be as salacious or as insulting as they can imagine for trademarked goods and services. Nevertheless, the mere fact that one can register these marks still does not mean that such marks are desirable from a marketing standpoint. The free market may prove to be the ultimate censor.