United States: If You Have Nothing Nice To Say, Say ®

On June 19, the Supreme Court struck down as unconstitutional a provision of the Lanham Act prohibiting federal registration of disparaging trademarks. The Court's ruling in Matal v. Tam, 582 U.S. ___, No. 15-1298 (June 19, 2017), opens the door to reinstate the recently cancelled WASHINGTON REDSKINS marks and anticipates federal protection for marks previously rejected as mired in sociopolitical controversy.

Tam focuses on Section 2(a) of the Lanham Act, known as the "disparagement clause," which prohibited registration of marks that "may disparage" persons, institutions, beliefs or national symbols, "or bring them into contempt, or disrepute." 15 U.S.C. § 1052(a). The disparagement clause was part of the Lanham Act when it was initially enacted more than 70 years ago. Marks denied registration as disparaging under Section 2(a) have included HEEB for entertainment, KHORAN for wine and SQUAW for clothing. In re Heeb Media LLC, 89 U.S.P.Q.2d 1071 (T.T.A.B. 2008); In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215 (T.T.A.B. 2010); In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264 (T.T.A.B. 2006).

In Tam, Asian-American singer Simon Tam sought to register THE SLANTS as the name of a rock band that aimed to reclaim derogatory stereotypes about people of Asian descent. The United States Patent and Trademark Office (PTO) refused registration of THE SLANTS on the grounds that it violated the disparagement clause, which determination was affirmed by the Trademark Trial and Appeal Board (TTAB). The Court of Appeals for the Federal Circuit, sitting en banc, subsequently vacated the TTAB's ruling, holding that the disparagement clause was facially unconstitutional under the free speech clause of the First Amendment.

On Monday, the Supreme Court had the final word, voting 8-01 to strike down the disparagement clause, which it stated "offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." The justices unanimously agreed that trademarks are private speech, rejecting the government's argument that federal registration converts a trademark into government speech not subject to the First Amendment. Beyond this point of consensus, however, the justices' bases for the unconstitutionality of the disparagement clause were fractured.

Justice Alito, joined by Justices Roberts, Thomas and Breyer, first distinguished federal trademark registrations from government-subsidized speech and government programs, for which some content and speaker-based restrictions are permitted. Without deciding whether trademarks constitute commercial speech, Alito's opinion held that the disparagement clause could not withstand even the relaxed judicial scrutiny that the Supreme Court applies to commercial speech. The opinion recognized that the government's interest in protecting underrepresented groups from demeaning messages "strikes at the heart of the First Amendment" and stated that the disparagement clause was not sufficiently "narrowly drawn" to protect the orderly flow of commerce.

A concurring opinion written by Justice Kennedy and joined by Justices Ginsburg, Sotomayor and Kagan highlighted that permitting a trademark applicant to register a positive or benign mark but not a derogatory one "reflects the Government's disapproval of a subset of messages it finds offensive." On this reasoning, the concurrence concluded that the disparagement clause constitutes "viewpoint discrimination," a form of speech suppression that is "presumptively unconstitutional."

The Tam decision comes in the wake of a highly publicized 2014 TTAB order canceling, on the basis of disparagement, six federal trademark registrations containing the term REDSKINS owned on behalf of the Washington Redskins football team. See Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 (T.T.A.B. June 18, 2014). The TTAB order was affirmed by the U.S. District Court for the Eastern District of Virginia in 2015, appealed to the United States Court of Appeals for the Fourth Circuit, and stayed pending Tam. The Tam decision is likely to be a game-changer for the sidelined Washington Redskins, and almost certainly will lead to reinstatement of the team's registrations.

Whether the Supreme Court's ruling will open the floodgates to applications for disparaging trademarks remains to be seen. What is certain, as Simon Tam proudly declared after Monday's decision, is that "[n]ow, Americans can decide who should prevail in the marketplace of ideas rather than a lone examining attorney."

Footnotes

1 Justice Gorsuch was confirmed after oral arguments were held and did not participate in the decision.

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