US Supreme Court Strikes Down Trademark Disparagement Law
by Jerry Glover
June 25, 2017
Noting that America’s free speech guarantees allow us to express the thoughts that we hate, the U.S. Supreme Court recently declared unconstitutional a provision of the federal trademark law (the Lanham Act) which prohibited the registration of “disparaging” trademarks. Matel v. Tam, No. 15-1293 (U.S. June 19, 2017).
That statute, 15 U.S.C. Sec. 1052(a), prohibited the registration of marks that may “disparage … or bring … into contempt or disrepute” any “persons, living or dead.” This is the road block that the plaintiff in this case, Simon Tam, faced when he attempted to register “The Slants” as a trademark for a band in which he was the lead singer. All members of the band were of Asian descent. Tam claimed that he wanted to reclaim and take ownership of stereotypes about Asians. The group released albums with names like “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” Here’s the cover of that last-named album:
He attempted to register THE SLANTS in the U.S. Trademark Office but an examining attorney in that office rejected the request citing the offensive nature of the mark stating that the dictionary definition of “slants” was derogatory. Appeals to that examining attorney and later to the Trademark Trial and Appeal Board (TTAB) ended in the same result. Tam then appealed to the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit reversed the TTAB holding that Sec. 1052(a) violated the First Amendment guarantee of free speech noting that the law engaged in “viewpoint-based discrimination”, that it regulated the expressive component of trademarks and, consequently, was more akin to political speech not commercial speech (commercial speech enjoys less First Amendment protection than other types of speech). The court concluded that the law could not survive what is known as “strict scrutiny.”
The Supreme Court affirmed the Federal Circuit’s ruling.
A little background on trademarks: The Court noted that federal law does not create trademarks. The existence of a trademark simply comes from use in commerce on goods or as part of a service. No federal approval through registration is needed for a trademark to exist. Even the US Trademark Office’s refusal to register a mark does not change its status. It’s still a trademark; it just lacks the special protections that federal registration affords. It can still be enforced against infringers under state law or under Section 43(a) of the Lanham Act which allows for infringement actions involving unregistered marks. But, again, without federal registration important legal rights are missing including the following: (i) registration serves as constructive notice of the trademark owner’s claim of ownership; (ii) the registration is prima facie evidence of the validity of the mark and its registration and the owner’s exclusive right to use the mark in commerce; and (iii) the mark can become incontestable (i.e., subject to only a very narrow set of claims alleging invalidity) after the mark has been registered for five years.
In the Slants case, the Supreme Court based its decision solely on the First Amendment guarantee of freedom of speech. The First Amendment does not regulate speech emanating from the federal government. But the Court pointed out a dichotomy: the First Amendment forbids the government from regulating speech in ways that favor some viewpoints or ideas at the expense of others but it does not require the government itself to maintain viewpoint neutrality. So, as the Court explained, the federal government could urge citizens to assist the war effort during the Second World War with posters and other messages but it was not required to issue posters encouraging citizens to refrain from engaging in those activities.
So is a trademark examiner’s decision to allow registration of a mark equivalent to government speech? The Court noted that the federal government does not dream up marks submitted to the US Trademark Office for registration and it does not edit those marks. Except for the disparagement law at issue in this case, the Trademark Office cannot reject a mark based on a viewpoint it appears to express even if it might be contrary to government policy. A decision allowing registration of a mark is not reviewed by any one in government unless challenged by a mark owner with a similar, registered mark. The Trademark Office cannot remove a registered mark from the trademark registry unless a cancellation proceeding is filed by a non-government party. The Court concluded that the public does not associate the contents of trademarks with the federal government.
The government argued that this case was like cases questioning whether governments can limit messages on automobile license plates citing a Supreme Court decision handed down in 2015, Walker v. Sons of Confederate Veterans, 135 S. Ct. 2239 (2015). In that case, the Court held that license plates were government speech based on three factors: (1) license plates have long been used by the States to convey state messages; (2) license plates are often closely identified in the public mind with the State since they are manufactured and owned by the State, designed by the State and serve as a form of government ID; and (3) in this case, the State of Texas maintained direct control over the messages conveyed on its specialty places. In the Slants case, the Court noted that none of these three factors were present in the federal trademark registration process.
The Court held that trademarks are private not government speech. Therefore, the disparagement prohibition in the federal trademark act violated the free speech guarantees of the First Amendment and cannot be enforced.
NOTE: As a result of this decision, a separate lawsuit alleging that the REDSKINS trademark for the Washington DC football team was disparaging under the federal trademark act was dropped by several Native American plaintiffs. The US Court of Appeals for the Fourth Circuit was to have heard the case. The US Justice Department also wrote to the court asking it to stop the case.