United States: Of Slants, Skins, And Signs: Section 2(a) Prohibition Of Disparaging Trademark Registrations Struck Down!

Last Updated: July 4 2017
Article by Peter A. Sullivan

Well, that happened! According to the Supreme Court's opinion in Matal v. Tam, Section 2(a) of the Lanham Act, which purports to prohibit the registration of marks that "disparage . . . persons," is unconstitutional.  When we first started blogging on this topic, here, we noted that certain stars were aligning for a constitutional showdown.  Subsequent posts here, here and here, followed the course of the proceedings to the Supreme Court.  That showdown has now taken place, with every single one of the eight sitting Justices of the Supreme Court striking down Section 2(a), albeit for slightly different reasons.

"Babbling Incoherently"

All members of the Court determined that the nature of the speech at issue was private speech, not government speech.  Justice Alito brought the point home thusly, "[if] the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently."  (Slip Op. at 14-15.)  Let that sink in a bit.  I don't think Justice Alito meant to draw a parallel to our current political discourse, though it makes you wonder.  Politics aside, because the Trademark Office does not otherwise filter messages in registering a trademark, a cacophony of messages emanates from that office.  The Court noted that, because there is no government endorsement that accompanies registration, "registration does not constitute approval of a mark."  (Slip op. at 15.)

In this section of the opinion, the unanimous Court also noted its concern for copyright law if it held that trademark registration should be considered government speech.  It noted that trademarks share with copyrights an expressive content, and the brevity in which a trademark conveys an expression is not a sufficient distinction to treat the two registrations differently.

Individuals and Groups

Seven of eight justices also agreed that Section 2(a) affects not only individual "persons" but groups of individuals, including those who share race or ethnicity.  The Court decided this issue even though it was not included in the writ of certiorari because the answer to this question could have avoided a determination on the constitutionality of the provision.

Government Subsidies?

There was a difference in opinion on the next portion of the analysis.  Four justices (Alito, Thomas, Breyer and C.J. Roberts) analyzed next whether the trademark regime fits within the government subsidy line of case, such as Rust v. Sullivan, 500 U.S. 173 (1991) (reviewing law providing public funds to private groups for family planning services), and National Endowment for Arts v. Finley, 524 U.S. 569 (1998) (reviewing law providing cash grants to artists).  This plurality found that the trademark registration regime "is nothing like" the types of government programs where the Court had previously upheld the constitutionality of government-subsidized speech.  In connection with this argument, the plurality rejected the government's urging to create a new doctrine directed to "government-program" cases.

Commercial Speech?

The four justices also avoided deciding whether the speech regulated is "commercial speech" under the Central Hudson Gas & Elec. v. Public Serv. Comm'n of N.Y. line of cases, which analyzes commercial speech under intermediate scrutiny.  They concluded that the restriction would fail under whichever level of scrutiny as a content-based restriction of speech.  They rejected the first rationale, seeking to limit speech that offends, because it is not a legitimate substantial government interest, and they sidestepped the other proffered reason, "the orderly flow of commerce."  The four justices found that, regardless of which rationale is considered, the statute also is not "narrowly drawn" to achieve the stated goal.

The plurality also threw a little shade on the commercial speech distinction, noting that it can be difficult to draw lines in practice: "The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case demonstrates.  If affixing the commercial label permits the suppression of any speech that may lead to political or social 'volatility,' free speech would be endangered."  (Slip op. at 26.)  Perhaps the Court would revisit the Central Hudson test given the proper vehicle.

The four other justices (Kennedy, Kagan, Ginsberg and Sotomayor) concluded that the government program analysis was unnecessary to the outcome of the case.  This plurality concluded that Section 2(a) was a content-based government restriction on free speech deserving of heightened scrutiny.

What's Next?

From this decision, we should expect Section 2(a)'s prohibition on morally scandalous trademarks also to be struck down on First Amendment grounds because the arguments are essentially the same.  This is just a supposition at this point, however, because both groups of justices were keen to note that this decision does not establish the framework for determining the constitutionality of any other sections of the Lanham Act.  This is important to remember when considering the constitutionality of labelling requirements under the Lanham Act, for example.  The Court gave itself sufficient analytical wiggle room to distinguish between the type of speech regulated by Section 2(a) and speech regulated by labelling laws.

What does this all means for the parties and for trademark practitioners?  Simon Tam gets to continue his pursuit of his trademark, and the NFL carries the day on protecting its mark for the Washington Football Club.  And perhaps there will also be a short-term run on the Trademark Office to register offensive trademarks.  Applications that have been rejected on the basis of Section 2(a) have a new life for those who use or intend to use the marks in commerce.  Given the robust First Amendment rights exercised by tee-shirt wearers walking through midtown Manhattan, I would not expect much more than a ripple in the tone of branding discourse resulting from this decision.  Consumers ultimately have the power of the purse to regulate commercial conduct – if consumers do not like the slogan, they will not buy the brand.

The power of the marketplace likely resolves most issues, but Section 2(a) also provided cover for refusing registration of messages that also would not be entitled to protection under First Amendment jurisprudence.  Perhaps a different version of Section 2(a) is needed to address these situations.

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