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Supreme Court Overturns Ban on Disparaging Trademarks


Today, the U.S. Supreme Court handed down one of the most eagerly-anticipated decisions in recent trademark law history. The decision, in the case Matal v. Tam, holds that part of §1052(a) of the Lanham Act, which prohibits the U.S. Patent and Trademark Office (USPTO, or just PTO) from registering terms that are disparaging as trademarks, is unconstitutional on First Amendment grounds. The Lanham Act is the U.S. Federal law that covers trademarks.

Now that this decision has come down, the USPTO will, presumably, have no grounds on which to reject any offensive word or phrase which appears in a trademark application (assuming the application meets the other requirements for trademark registration.)

You can read today’s Supreme Court opinion in Matal v. Tam here. From the opinion:

[The “disparagement clause”] offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.

I wrote about the case in question in a few previous blog posts: Big First Amendment News: The Slants Win on Appeal and Supreme Court to Decide on Racially Disparaging Trademarks. To summarize the case in question:

Today’s case was about a rock band named The Slants. The band is made up of Asian-Americans. The word “slant” is often considered a slur against Asians and people of Asian descent.

Simon Shiao Tam, the leader of the band, applied to register their name as a trademark; the USPTO refused on the grounds that the word is disparaging and therefore not eligible for trademark registration. Tam, along with his legal counsel, appealed the matter to federal court.

In today’s opinion, the Court rejected the argument that a Federal trademark registration is a form of government speech:

At issue here is the content of trademarks that are registered by the PTO, an arm of the Federal Government. The Federal Government does not dream up these marks, and it does not edit marks submitted for registration. Except as required by the statute involved here…an examiner may not reject a mark based on the viewpoint that it appears to express. Thus, unless that section is thought to apply, an examiner does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy or whether any such viewpoint is consistent with that expressed by other marks already on the principal register…

In light of all this, it is far-fetched to suggest that the content of a registered mark is government speech. If the federal prodigiously and incoherently. It is saying many unseemly things.registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things.

At one point, the opinion states: “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.” Surely that doesn’t apply to readers of this blog.

Note that today’s opinion doesn’t specifically invalidate all of the relevant parts of §1052(a), which read:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,…

Instead, today’s ruling applies, on its face, only to the ban on registrations that “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” It’s unclear how future courts will interpret the breadth of today’s ruling. The sense seems to be that the other relevant parts of §1052(a) are bound to be overturned on similar grounds. Noted trademark scholar Rebecca Tushnet commented on Twitter:

…suggesting that the entire doctrine of Trademark Dilution will eventually fall as a result of Matal v. Tam. (For more on Trademark Dilution, check out this blog post and others that I’ve written on the subject over the years.) I’m not sure I follow that line of reasoning at this point, but we’ll see.

Note: This case was previously referred to as Lee v. Tam. “Lee” referred to Michelle K. Lee, former Director of the USPTO. However, Ms. Lee resigned her post a few weeks ago, so the case citation was changed to refer to the Interim Director, Joseph Matal.

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