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.
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.
Portability of estate and gift tax enables a surviving spouse to inherit any unused portion of their deceased spouse’s federal estate and gift tax exemption. So, if one spouse doesn’t utilize their full exemption, the surviving spouse can effectively double their exemption amount with regard to estate tax liability. For married couples, portability offers a […]
Pet Trusts in New Jersey and New York: A Practical Estate Planning Tool
For many of us, pets are more than companions—they are members of the family. Yet they are often overlooked or inadequately provided for when it comes to estate planning. A pet trust offers a legally enforceable way to ensure that your animal continues to receive proper care if you become incapacitated or pass away. As […]
For many New Jersey business owners, a closely held company represents decades of work, financial investment, and personal sacrifice. Trusts in business succession planning are one of the most effective tools for protecting that value, allowing founders to control how and when the business passes to the next generation while reducing the risk of disputes, […]
Read Before You Sign: IT Contract Pitfalls Every NJ Business Should Know
In today’s digital economy, New Jersey businesses of all sizes rely heavily on technology vendors, software providers, cloud platforms, and managed IT services. Whether your company is purchasing software, migrating data to the cloud, engaging a cybersecurity consultant, or entering into a long-term managed services agreement, a careful IT contract review can have significant operational, […]
Non-disclosure agreements (NDAs) remain a critical tool for protecting sensitive business information. However, New York NDA requirements have evolved, and businesses must ensure these agreements are carefully drafted to remain enforceable. In a competitive market like New York City, NDAs are commonly used to protect proprietary information, client relationships, and strategic plans. At the same […]
How Courts Evaluate Testamentary Capacity and Undue Influence Will contests in New Jersey are difficult to win, given the strong presumption that a properly executed will reflects the testator’s intent. However, challenges based on lack of testamentary capacity and undue influence remain common, particularly where there are concerns about mental capacity or the involvement of […]
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!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
