United States: Free Speech Trumps The Lanham Acts Disparagement Clause

The Supreme Court on June 19, 2017 unanimously ruled that the United States Patent and Trademark Office's (USPTO) denial of a service mark application for the term "The Slants" on the basis of the disparagement clause (15 U.S.C. §1052(a)) was incorrect, and that the disparagement clause violates the First Amendment. Matal v. Tam, No. 15-1293 (U.S. Jun. 19, 2017). The Court's decision struck down the disparagement clause of the Lanham Act's Section 2a, a rule in effect since 1946, as discrimination based on unpopular speech.

Simon Tam filed a trademark application for his band, known as "The Slants." The word "slants" can be a "derogatory term for persons of Asian decent." Id., at 1. The United States Patent & Trademark Office ("USPTO") denied the application because the term "The Slants" may "disparage ... or bring ... into contemp[t] or disrepute" any "persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." Id., at 5–6. The USPTO applies a two-part test when deciding whether a trademark is disparaging. Trademark Manual of Examining Procedures §1203.03(b)(i) (Apr. 2017), p. 1200–150, http://tmep.uspto.gov. First, the examiner should consider "the likely meaning of the matter in question, taking into account not only the dictionary definitions, but also the relationship of the matter to other elements of the mark, the nature of the goods and services, and the manner in which the mark is used in the marketplace...." Matal, slip op. at 6. If the meaning of the mark is found to refer to "identifiable persons, institutions, beliefs or national symbols," the examiner moves on to the second step. Id. This step consists of "asking 'whether the meaning may be disparaging to a substantial [component] of the referenced group.'" Id. A prima facie case of disparagement is found when a "substantial [component], although not necessarily a majority, of the referenced group would find the proposed mark ... to be disparaging in the context of contemporary attitudes." Id.

Tam appealed the USPTO's decision to the U.S. Court of Appeals for the Federal Circuit. That Court siting en banc held that the disparagement clause violates the First Amendment's guarantee of free speech. In re Tam, 808 F.3d 1321 (CA Fed. 2015) (en banc). The court held the government may not "penalize private speech merely because it disapproves of the message it conveys."Id., at 1327. The Supreme Court granted the USPTO's writ of certiori.

In an opinion by Justice Samuel Alito, the Supreme Court affirmed the Federal Circuit's decision that the disparagement clause violates the First Amendment's guarantee of free speech. A unanimous Court held that the disparagement clause "violates the Free Speech Clause of the First Amendment ... [because] ... [i]t offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." Matal, slip op. at 1–2.

The Court's opinion analyzed three main arguments in determining the unconstitutionality of the disparagement clause: (1) whether trademarks are government speech, as opposed to private speech, (2) whether trademarks are a form of government subsidy, and (3) whether the constitutionality of the disparagement clause should be tested under a new "government-program" doctrine. Id., at 12. The Court rejected all three arguments.

According to the Court's ruling, trademarks are not government speech. Id., at 18. While trademarks are registered by the USPTO, a government agency, the Federal Government "does not dream up these marks, and it does not edit marks submitted for registration as except required by 15 U.S.C. §1052(a)." Id., at 14. Furthermore, a trademark examiner does not inquire whether any viewpoint conveyed by a mark is consistent with any Government policy. Id. Indeed, registration of a mark does not constitute approval of a mark. Id., at 15 (quoting In re Old Glory Condom Corp., 26 USPQ 2d 1216, 1220, n.3 (TTAB 1993)). The Court commented, "[i]f private free speech would be passed of as government speech by affixing a government seal of approval, government would silence or muffle the expression of disfavored viewpoints." Id., at 13–4.

Trademarks were also determined not to be a form of government subsidy, as the government does not confer a pecuniary benefit upon the trademark applicant. See Id., at 19. The government argued that the facts of this case should be governed by case law holding that government subsidized speech can express a particular view point. Id., at 18–9. The Court disagreed that the facts here fell within government subsidized speech. Id., at 19. Those cases, the Court explained, all involve cash subsidies or their equivalent. Id. But unlike cash subsidy cases, the USPTO does not pay money to parties seeking registration of a mark—rather, the applicant pays a filing fee to the government. Id. The Court was unpersuaded by the government's argument that "registration provides valuable non-monetary benefits 'that are directly traceable to the resources devoted by the federal government to examining, publishing, and issuing certificates of registration for those marks.'" Id. The Court noted that the majority of government services require the use of government funds, such as police and fire protection and the use of public parks and highways. Id., at 19–20.

Finally, the government argued that the disparagement clause should be upheld as "a new doctrine that would apply to 'government-program' cases." Id., at 20. Essentially, the request was one for the creation of a broader doctrine that would be applied to trademark registrations. See Id. The two cases cited by the government were those "involving a public employer's collection of union dues from its employees," which the Court found neither helpful nor compelling. Id. Instead, the Court restated the constitutional tenet that the public expression of ideas may not be prohibited simply because some members of the public find the ideas to be offensive. Id., at 22–3.

The Supreme Court's rejection of the constitutionality of the disparagement clause thus opens the door to trademarks that may have previously been rejected by the USPTO, expanding the understanding of free speech as it pertains to these applicants.

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