United States: Siding With The Slants: Ban On Disparaging Marks Held Unconstitutional

In Short

The Decision: The United States Supreme Court held that Section 2(a) of the Trademark Act, prohibiting registration of "disparaging" trademarks, is unconstitutional.

The Reasoning: Trademarks are private speech. The "disparagement" provision of Section 2(a) violates the First Amendment's Free Speech Clause.

The Implications: Trademark applications cannot be refused on the basis that the marks are "disparaging"—a decision that will likely be extended to marks considered "immoral" or "scandalous." The decision impacts the application to register THE SLANTS, as well as other applications currently suspended pending this decision. It will also affect the cancelled REDSKINS registrations.


Asian rock band The Slants is no longer "The Band Who Must Not Be Named," as they titled their most recent album. On June 19, 2017, the United States Supreme Court decided Matal v. Tam, striking a provision of the Lanham Act, which was enacted in 1946, and holding that a law prohibiting the registration of "disparaging" trademarks violates the Free Speech Clause of the First Amendment.

Background

The case arises out of an Asian American's attempt to register THE SLANTS to identify his band comprised exclusively of Asian Americans. The band sought registration to "reclaim" Asian stereotypes.

However, the mark THE SLANTS was refused registration because it was deemed likely to disparage "persons of Asian descent" under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a). Section 2(a) prevents registration of a trademark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." The decision was affirmed by the Trademark Trial and Appeal Board ("TTAB").

In April 2015, Tam appealed the TTAB's decision to the Federal Circuit which initially affirmed the TTAB's decision. The court then issued a sua sponte decision vacating the opinion. On December 22, 2015, an en banc Federal Circuit reversed the TTAB's decision, holding that Section 2(a)'s prohibition on "disparaging" marks violates the First Amendment.

Supreme Court Decision

In a unanimous judgment announced by Justice Alito, the Supreme Court struck down Section 2(a)'s disparagement provision, holding that it "offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."

The Court rejected each of the government's arguments that the provision is constitutional. First, the Court unanimously held that trademarks are private speech, not government speech. Otherwise, "the Federal Government is babbling prodigiously and incoherently ... and expressing contradictory views." The Court distinguished its decision in Walker v. Texas Division, Sons of Confederate Veterans, Inc., holding that while license plates are government speech, trademarks are not. Trademarks, unlike license plates, have not historically been used to convey state messages, are not "closely identified in the public mind" with the government, and have not had their content directly controlled by the government. Additionally, if registration converted a trademark to government speech, the effect in the copyright context would be a particularly "worrisome implication."

Speaking on behalf of four justices, Justice Alito also rejected the government's argument that a trademark registration is a form of government subsidized speech permitting viewpoint discrimination. The Court distinguished the case law cited by the government. Unlike in the cited subsidy cases, the Patent and Trademark Office ("PTO") does not pay the applicant; it is the other way around.

Finally, the four justices rejected the government's argument that the disparagement clause is constitutional under a "government-program" doctrine, finding trademark registrations are not limited public forums  that permit content-related restrictions.

The Court also noted the limits of its holding. First, the Court left open the question of whether the "government-program" framework is appropriate for free speech challenges to Lanham Act provisions generally. Second, the Court did not rule on whether trademarks are commercial speech, finding such a ruling unnecessary because the disparagement clause could not withstand even intermediate scrutiny. The Court held that the disparagement clause was not "narrowly drawn" to remove trademarks that support discrimination, finding the provision "[i]s not an anti-discrimination clause; it is a happy-talk clause." As such, the disparagement provision goes further than necessary to serve the alleged interest and is unconstitutional.

Implications

The most immediate effect of the Supreme Court's decision is that refusals will be withdrawn for those trademark applications initially rejected on the basis of Section 2(a), which were suspended pending this decision. Trademark owners should consider monitoring such publications for potentially infringing marks.

The Washington Redskins should also benefit from this decision. Pro-Football Inc. v. Blackhorse (involving cancellation of the REDSKINS trademark registrations in the Fourth Circuit) was stayed pending this decision. In view of the Court's holding, the REDSKINS marks should no longer be deemed disparaging. Furthermore, other sports franchises that may have been concerned about the fate of their marks (e.g., the Cleveland Indians, Atlanta Braves, Kansas City Chiefs) should have less concern about the validity of their registrations.

The holding should also extend to trademarks deemed "immoral" or "scandalous" under Section 2(a). Accordingly, owners of marks considered "scandalous" or "disparaging" may want to consider filing applications for registration. Trademark owners should be on alert for the influx of applications to register "immoral" and "scandalous" marks that is likely to follow.


Three Key Takeaways

  1. Trademarks cannot be denied federal registration on the grounds that they are "disparaging."
  2. The application to register THE SLANTS, as well as other suspended applications for "disparaging" and "scandalous" marks, will likely proceed to publication.
  3. Sports franchises that may have been concerned about the fate of their marks (e.g., the Cleveland Indians, Atlanta Braves, Kansas City Chiefs) should have less concern about the validity of their registrations.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions