Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm Insights

Supreme Court Lifts Ban on Offensive Trademark Registrations

Author: Scarinci Hollenbeck, LLC

Date: June 22, 2017

Key Contacts

Back

Matal v. Tam: SCOTUS Holds Ban on Offensive Trademark Registrations As Violation of First Amendment

In Matal v. Tam, the U.S. Supreme Court held that the federal ban on registering disparaging trademark runs afoul of the First Amendment. The landmark decision is a victory for the Asian-American band The Slants. It also dramatically improves the odds that the Washington Redskins will be able to revive its trademarks, which were revoked in 2014 under the same trademark law.

SCOTUS Lifts Offensive Trademark Registration Ban
Photo courtesy of Stocksnap.io

Legal Fight to Register Slants Trademark

Under the Lanham Act, the U.S. Patent and Trademark Office (USPTO) may refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” A “disparaging mark” is defined as one that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.”

Simon Shiao Tam sought to register the mark “The Slants” in connection with his American-Asian dance band of the same name. In support of the registration, Tam and his band members maintained that by using the slur as the name of their group, they would help to “reclaim” the term and drain its denigrating force. Nevertheless, the U.S. Patent and Trademark Office (USPTO) denied the registration, concluding that the mark was disparaging to people of Asian descent.

Tam challenged the denial, arguing that the Lanham Act’s prohibition of disparaging marks was unconstitutional under the First Amendment. The Trademark Trial and Appeal Board upheld the denial. However, on appeal, the U.S. Court of Appeals for the Federal Circuit struck down the Lanham Act provision.

“Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others,” Judge Kimberly Moore wrote on behalf of the majority. As she further noted in the court’s opinion, the Constitution protects free speech “even when speech inflicts great pain.”

Supreme Court Holds Trademark Ban Violates First Amendment

The Supreme Court ruled this week, in an 8-0 decision, that it agrees with the Federal Circuit ruling. “We now hold that this provision violates the Free Speech Clause of the First Amendment,” Justice Samuel Alito wrote. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

In reaching its decision, the Court rejected the Government’s argument that registered trademarks constitute government speech, which is outside the purview of the First Amendment. “It 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,” Justice Alito wrote. “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.”

The Court went on to hold that the disparagement clause violates the First Amendment because it amounts to viewpoint discrimination, despite its ban on all disparaging marks. “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 Supreme Court’s decision in Matal v. Tam may open the floodgates for new trademark applications for offensive marks. However, businesses should exercise caution in incorporating such terms into their intellectual property portfolios. As highlighted by the backlash faced by the Washington Redskins, the risk of negative publicity and alienating certain customers may or may not outweigh the advantages of registering a disparaging mark.

Do you have any questions regarding SCOTUS’ lifting of the offensive trademark registration ban? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
Dissolving Your Business: Essential Legal Steps to Protect Your Interests post image

Dissolving Your Business: Essential Legal Steps to Protect Your Interests

If you’re considering closing your business, it’s crucial to understand that simply shutting your doors does not end your legal obligations. Unless you formally dissolve your business, it continues to exist in the eyes of the law—leaving you exposed to ongoing liabilities such as taxes, compliance violations, and potential lawsuits. Dissolving a business can seem […]

Author: Christopher D. Warren

Link to post with title - "Dissolving Your Business: Essential Legal Steps to Protect Your Interests"
The Role of Corporate Restructuring in Mergers & Acquisitions post image

The Role of Corporate Restructuring in Mergers & Acquisitions

Contrary to what many people think, corporate restructuring isn’t all doom and gloom. Revamping a company’s organizational structure, corporate hierarchy, or operations procedures can help keep your business competitive. This is particularly true during challenging times. Corporate restructuring plays a critical role in modern business strategy. It helps companies adapt quickly to market changes. Following […]

Author: Dan Brecher

Link to post with title - "The Role of Corporate Restructuring in Mergers & Acquisitions"
Crypto Enforcement: A Former Prosecutor’s Warning to Criminals and the Public post image

Crypto Enforcement: A Former Prosecutor’s Warning to Criminals and the Public

Cryptocurrency intimidates most people. The reason is straightforward. People fear what they do not understand. When confusion sets in, the common reaction is either to ignore the subject entirely or to mistrust it. For years, that is exactly how most of the public and even many in law enforcement treated cryptocurrency. However, such apprehension changed […]

Author: Bryce S. Robins

Link to post with title - "Crypto Enforcement: A Former Prosecutor’s Warning to Criminals and the Public"
Understanding Chattel Paper: A Key Component in Secured Transactions post image

Understanding Chattel Paper: A Key Component in Secured Transactions

Using chattel paper to obtain a security interest in personal property is a powerful tool. It can ensure lenders have a legal claim on collateral ranging from inventory to intellectual property. To reduce risk and protect your legal rights, businesses and lenders should understand the legal framework. This framework governs the creation, sale, and enforcement […]

Author: Dan Brecher

Link to post with title - "Understanding Chattel Paper: A Key Component in Secured Transactions"
Crypto Compliance: A Comprehensive Guide post image

Crypto Compliance: A Comprehensive Guide

For years, digital assets operated in a legal gray area, a frontier where innovation outpaced the reach of regulators and law enforcement. In this early “Wild West” phase of finance, crypto startups thrived under minimal oversight. That era, however, is coming to an end. The importance of crypto compliance has become paramount as cryptocurrency has […]

Author: Bryce S. Robins

Link to post with title - "Crypto Compliance: A Comprehensive Guide"
Supreme Court and Title VII: Implications for Reverse Discrimination post image

Supreme Court and Title VII: Implications for Reverse Discrimination

Earlier this month, the U.S. Supreme Court issued a decision in Ames v. Ohio Department of Youth Services vitiating the so-called “background circumstances” test required by half of federal circuit courts.1 The background circumstances test required majority group plaintiffs pleading discrimination under Title VII of the Civil Rights Act to meet a heightened pleading standard […]

Author: Matthew F. Mimnaugh

Link to post with title - "Supreme Court and Title VII: Implications for Reverse Discrimination"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!