In case you haven't heard, the Supreme Court ruled yesterday that the disparagement provision of Section 2(a) of the Trademark Act is facially unconstitutional because it violates the Free Speech clause of the First Amendment. "It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." Matal v. Tam, No. 15-1293 (June 19, 2017).
Simon Tam's application to register the mark THE SLANTS for a musical band was refused registration under Section 2(a), which in pertinent part bars the registration of marks that may "disparage ... or bring into contemp[t] or disrepute" and "persons, living or dead." The TTAB affirmed the refusal [here], but the CAFC reversed [here].
The Supreme Court, in an opinion by Justice Alito, observed that federal registration "confers important legal rights and benefits on trademark owners who register their marks." B&B Hardware, 575 U.S. ___, at ___. Registration serves as constructive notice of a registrant's claim of ownership, provides prima facie evidence of the validity of the mark and its registration and of the owner's exclusive right to use the mark, enables a mark to be rendered "incontestable" after five years of use, and allows the owner to stop importation of infringing goods.
The Court thoroughly rejected the Government's arguments that trademarks are government speech, that trademarks are a form of government subsidy, and that the disparagement clause should be tested under a new "government-program" doctrine. The Court observed that even in situations where some content- and speaker-based restriction may be allowed, "viewpoint discrimination" is forbidden.
Our cases use the term “viewpoint” discrimination in a broad sense, ... and in that sense, the disparagement clause discriminates on the bases of “viewpoint.” To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.
The Government argued that all trademarks are commercial speech and thus subject to relaxed scrutiny under the First Amendment, as outlined in Central Hudson Gas Elec. Corp. v. Public Serv. Comm’n of N. Y., 447 U. S. 557 (1980). The Court avoided that question because it found that the disparagement clause of Section 2(a) "cannot withstand even Central Hudson review."
Under Central Hudson, a restriction of speech must serve "a substantial interest," and it must be "narrowly drawn." Id., at 564–565 (internal quotation marks omitted). This means, among other things, that "[t]he regulatory technique may extend only as far as the interest it serves." Id., at 565. The disparagement clause fails this requirement.
The Government claimed an interest in preventing speech that expresses offensive ideas, but that position "strikes at the heart of the First Amendment." Demeaning speech may be hateful, but the Constitution protects the freedom to express hateful thought. The Government also claimed another interest is to protect the orderly flow of commerce, since discriminatory conduct has an adverse effect on commerce. But, the Court pointed out, the disparagement provision is not "narrowly drawn to drive out invidious discrimination." It applies to any trademark that disparages any person, group, or institution. "It is not an anti-discrimination clause; it is a happy-talk clause," and goes further than necessary to serve the asserted interest.
The Court therefore held the disparagement provision of Section 2(a) to be unconstitutional on its face.
In a concurring opinion, Justice Kennedy observed that "[t]he central purpose of trademark registration is to facilitate source identification."
To serve that broad purpose, the Government has provided the benefits of federal registration to millions of marks identifying every type of product and cause. Registered trademarks do so by means of a wide diversity of words, symbols, and messages. Whether a mark is disparaging bears no plausible relation to that goal.