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Supreme Court Lifts Ban on Offensive Trademark Registrations


June 22, 2017
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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

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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.

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