Supreme Court Finds Law Banning Registration of Disparaging Trademarks Unconstitutional

By Alexandra Shulman
June 23, 2017

Earlier this week, in Matal v. Tam, the United States Supreme Court unanimously ruled in favor of Portland-based rock band, the Slants, finding that the section of the Lanham Act banning offensive trademarks was an unconstitutional restraint on free speech.

Slants founder Simon Tam attempted to trademark the band's name in 2011, but the U.S. Patent and Trademark Office denied the request pursuant to 15 U.S.C. § 1052(a), the section of the Lanham Act that bans offensive or disparaging trademarks. The band members, who are Asian-American, selected the name to reclaim the derogatory term and to drain its denigrating force.

The Lanham Act contains provisions that bar certain trademarks, including 15 U.S.C. § 1052(a) (the disparagement clause), which prohibits the registration of a trademark "which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."  When determining whether a trademark is disparaging, an examiner at the PTO applies a two-part test -- first, considering the likely meaning of the trademark, and second, considering whether a substantial composite of persons find the term offensive.  Mr. Tam argued that the disparagement clause violated the Free Speech Clause of the First Amendment.

The Government argued that the disparagement clause did not violate the Free Speech Clause because: (1) trademarks are government speech, not private speech; (2) trademarks are a form of government subsidy; and (3) the constitutionality of the disparagement clause should be tested under a new "government-program" doctrine.  The Supreme Court rejected all three arguments, and ultimately concluded that the disparagement clause was the "essence of viewpoint discrimination," as it reflects the Government's interest in preventing speech expressing offensive ideas.