United States: The United States Supreme Court Holds that the Lanham Act's Disparagement Clause Violates the Free Speech Clause to the First Amendment, Opening Registration for Additional Marks and Potentially Preserving Additional Marks

On June 19, 2017, the United States Supreme Court invalidated a provision of the Lanham Act, 15 U.S.C. § 1052(a), which had prohibited the registration of trademarks "which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, . . . or bring them into contempt, or disrepute[.]" Specifically, in Matal v. Tam, Case No. 15-1293, 582 U.S. (Jun. 19, 2017)("Tam"), the Supreme Court designated this provision of the Lanham Act the "disparagement clause," and held that the disparagement clause "violates the Free Speech Clause of the First Amendment" because it "offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."

The Tam case arose when Simon Tam applied for federal registration of the moniker "THE SLANTS" for his rock band. Mr. Tam chose this moniker to "reclaim" and "take ownership" of stereotypes about people of Asian ethnicity. The Patent and Trademark Office ("PTO") denied registration of the mark on the grounds that it was offensive, derogatory, and because there "is a substantial composite of persons who find the term in the applied-for mark offensive." The case found its way to the PTO's Trademark Trial and Appeal Board ("TTAB") and then to the Federal Circuit Court, which found that the Lanham Act's disparagement clause violated the Free Speech Clause of the United States Constitution.

On appeal, the Supreme Court explained that trademarks "are private, not government, speech." As such, the PTO does not decide upon whether any viewpoint conveyed by a mark is consistent with government policy. Moreover, the Free Speech Clause does not permit "viewpoint" discrimination. The Supreme Court said that, under the Free Speech Clause, "ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers." Further, the Supreme Court found that "THE SLANTS" was an expression of a viewpoint. The Supreme Court concluded that the government could not bar offensive use of the mark "THE SLANTS," identified by the government as offensive under the Lanham Act's disparagement clause because: "the disparagement clause violates the Free Speech Clause of the First Amendment" by regulating a private viewpoint.

We can expect that the Supreme Court's opinion in Tam will open a broad set of trademarks for registration that were previously barred from registration under the disparagement clause by the PTO. The Tam opinion is also important to businesses whose marks were in dispute as disparaging, such as the Washington Redskins, whose use of the term "Redskins" has been a lightening rod for disparagement critics. The Tam opinion does not directly decide whether other provisions of 15 U.S.C. § 1052(a) are unconstitutional.

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