Trevor Little

The Supreme Court has handed down its long-awaited ruling in Matal v Tam, holding that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment. In a unanimous 8-0 opinion, the court states that “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’”. In response, the USPTO has confirmed to World Trademark Review that it plans to "issue further guidance" on how it will affect the examination of applications.

On December 22 2015 the Federal Circuit reversed the refusal of the Trademark Trial and Appeal Board (TTAB) to register the mark THE SLANTS for entertainment in the form of a musical group. The court held that Section 2(a) of the Lanham Act, which bars the federal registration of trademarks that consist of or comprise “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”, was unconstitutional and should be reversed. In April 2016, we reported that the USPTO had filed a petition for a writ of certiorari to review the US Court of Appeals for the Federal Circuit decision in In re Tam, asking the Supreme Court to answer the question of whether the disparagement provision in Section 2 of the Lanham Act is facially invalid under the free speech clause of the First Amendment. Today the Supreme Court handed down its judgement.

Before assessing whether the disparagement clause violates the First Amendment, the court considered Tam’s argument that the clause does not reach marks that disparage racial or ethnic groups. Tam argued that the prohibition of the registration of marks that disparage “persons… includes only natural and juristic persons,” not “non-juristic entities such as racial and ethnic groups”. However, the court disagreed, stating that as the clause uses the word “persons”, a mark that disparages a “substantial” percentage of the members of a racial or ethnic group necessarily disparages many “persons,” namely, members of that group.

However, on the big question the court sided with Tam. To commence, the court considered three arguments made by the government: (1) that trademarks are government speech, not private speech; (2) that trademarks are a form of government subsidy; and (3) that the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine.

On the first, Justice Alito, delivered the opinion of the court and stated that, contrary to the government’s contention, trademarks are private, not government speech. It noted that, while the government-speech doctrine is important, “it is a doctrine that is susceptible to dangerous misuse. If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavoured viewpoints”.

In this instance, it notes, the government does not create or edit the marks submitted for registration. Going further, it suggests that “it is far-fetched to suggest that the content of a registered mark is government speech”, asking if that was the case would it mean the government was warning about a coming disaster when it registered the mark ENDTIME MINISTRIES? The opinion expands: “If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. 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.”

Justice Alito, joined by the Chief Justice, Justice Thomas, and Justice Breyer, then turned to the question of government subsidy, stating that the argument that this case is governed by the Court’s subsidised-speech cases is unpersuasive. The suggestion of a new “government-program” doctrine was similarly deemed unpersuasive. The court next explored the issue of commercial speech, stating that the disparagement clause cannot withstand Central Hudson review.

Tackling the notion that the government has an interest in preventing speech expressing ideas that offend, the opinion states that this “strikes at the heart of the First Amendment”, expanding: “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’.”  In short, the court found that the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend”.

While the Justices sometimes adopted different perspectives, the court unanimously held that the disparagement clause violates the Free Speech Clause of the First Amendment and the case will be closely scrutinised over the coming days. Indeed, a spokesperson for the USPTO confirmed to World Trademark Review that it is "currently reviewing the decision", adding: "As always, we will continue to follow the trademark laws in examining applications. We plan to issue further guidance following a careful review of the Court’s decision."

The decision will no doubt generate numerous media headlines – many of which will focus on the possible impact of the decision on the Washington Redskins’ fight against the cancellation of a number of its registrations. While that is an understandable hook, today should be all about Tam and The Slants.

World Trademark Review is currently compiling community analysis of the decision and will post this soon.


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