United States: INSIGHT: Will SCOTUS Ruling On Vulgar Trademark Clarify Aftermath Of 全lants' Ruling?

The Supreme Court's Matal v. Tam decision, ruling the government must grant a trademark to the band called the Slants, offered little guidance for future legal cases. Archer & Greiner's John Connell, who argued Tam before the court, weighs in on how the court's upcoming decision on a designer's efforts to trademark his design line could clarify Tam.

The U.S. Supreme Court ruled in 2017 in Matal v. Tam, that the disparagement clause of federal trademark law was an unconstitutional violation of the Free Speech Clause of the First Amendment, offending "a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."

Despite the elegant simplicity of this holding, the reasoning of the court is not a model of clarity, and offers little guidance as to the legal standards governing future cases. The court's decision in Iancu v. Brunetti could change that.

The issue in Tam was whether denial of trademark registration of "Slants" as disparaging to Asians is constitutionally permissible. The decision, written by Justice Alito, systematically addressed each of the contentions raised by the parties, but there was little consensus on the salient issues.

Of course, the overwhelming majority, not surprisingly, agreed on the noncontroversial sections on case background and constitutional avoidance. They also were unanimous on the conclusion that registration of a trademark does not ipso facto convert that mark into government speech; in fact, the government speech doctrine was "susceptible to dangerous misuse", and any such argument was "a huge and dangerous extension of the government speech doctrine."

Supreme Court Ducks

But thereafter the court fractured. Four Justices opined that the trademark registration did not entail any government financial subsidy of speech or constitute a government program conferring non-cash benefits serving important governmental interests, where some content- or speaker-based restrictions are permitted.

They then made passing reference to the "limited public forum" analogy, to underscore the prohibition against viewpoint discrimination. In that respect, "Giving offense is a viewpoint." At that point, it appeared that the court would embark on an analysis of the applicable legal standard.

Instead, the court ducked.

While acknowledging the parties' dispute as to whether a trademark is deemed commercial speech subject to intermediate scrutiny or expressive speech subject to strict scrutiny, the court stated, "We need not resolve this debate ... because the disparagement clause cannot withstand even [intermediate scrutiny]."

Under this analysis, the disparagement clause was nothing more than a "happy-talk clause". At the same time, the court diffidently admitted that "as this case illustrates, trademarks often have an expressive content" and "convey a message", rendering "the line between commercial and non-commercial speech ... not always clear".

The court was content to leave it there. The four-justice concurrence, authored by Justice Kennedy, was not so content.

Justice Kennedy agreed with the court's discussion of viewpoint discrimination, but noted that "the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties."

Indeed, the disparagement clause "singled out a subset of messages for disfavor based on the views expressed, which was "the essence of viewpoint discrimination." "By mandating positivity, the law here might silence dissent and distort the marketplace of ideas." This was tantamount to government censorship, which therefore invoked "heightened scrutiny".

Separately, Justice Thomas wrote a concurrence to reiterate his belief that strict scrutiny was appropriate, regardless of whether the speech at issue is commercial or noncommercial.

In the wake of Tam, it remains unsettled whether marks, with or without expressive content, are to be afforded constitutional protection under intermediate or strict scrutiny. Though there was ample existing legal precedent favoring strict scrutiny容ven as to content, let alone viewpoint葉he court simply left this question open.

Enter Brunetti.

The issue in Brunetti is whether denial of trademark registration of "FUCT" as immoral and scandalous is constitutionally permissible. Similar to Tam, Brunetti involves 15 U.S.C. ァ1052(a) of the Lanham Act, but implicates the immoral and scandalous matter clause, not the disparagement clause.

While the analysis between Tam and Brunetti has many parallels, this case is slightly different because it is not easily characterized as conveying a non-commercial political message, but can more accurately be said to constitute a form of commercial speech.

Law Not a Morality Code

Nonetheless, essential to this analysis is the legal proposition that the law is not a morality code: offensive speech is still protected speech. It is not a listener's perception of speech that controls whether that speech is protected. That can never be the case because the audience of listeners is so diverse and audiences are so varied that the listeners' perspective can never control the speaker's message without infringing speech.

Even though someone might be offended by FUCT and its apparent meaning, it could in fact be understood to be simply an acronym for a phrase that the author of that term intended, i.e., "Friends U Can't Trust". So putting aside any listener's perception謡hether accurate or inaccurate, offended or not葉here is no legal justification to deny constitutional protection to the message of the speaker. If "giving offense is a viewpoint," then the outcome of Brunetti seems foreordained.

As was said of Tam, so it can be said of Brunetti: "A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government's benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society."

Inasmuch as Tam did not settle the question of the proper legal standard governing speech in the trademark realm, Brunetti may be able to definitively determine whether the strict scrutiny analysis will apply to forms of expression in trademarks that are protected under the First Amendment, whether deemed commercial or noncommercial speech.

At the end of oral argument of Tam in 2017, Justice Ginsberg asked, "Would you say the same thing about a scandalous mark? Would [denial of registration] be equally impermissible?", to which I succinctly replied, "I think that conclusion is inevitable." Clearly, Justice Ginsberg was looking over the court's shoulder.

Now we will see just how inevitable that conclusion is.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

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.

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
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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痴 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痴 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痴 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痴 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痴 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