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.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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.

Events from this Firm
22 Aug 2018, Webinar, Boston, United States

After years of debate, the Massachusetts Legislature recently passed a comprehensive noncompete reform law, and Governor Baker signed the bill on August 10, 2018.

12 Oct 2018, Other, Boston, United States

The New England Electricity Restructuring Roundtable has been meeting bimonthly since 1995 to discuss current topics related to important changes in the electric power industry in Massachusetts and throughout New England.

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
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
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.


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.


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