On June 19, 2017, the United States Supreme Court issued a much-anticipated decision, holding that the so-called “disparagement clause” of the Lanham Act is an impermissible restriction on free speech under the First Amendment. The ruling is the culmination of years of litigation, and clears the way for Simon Shiao Tam and the Slants to register the name of their band as a US trademark.


The Band Who Could Not be Named

As we previously reported, Simon Tam, founding member and bassist of the Asian American dance-rock band “The Slants,” tried to register the name of the band at the U.S. Patent & Trademark Office (“USPTO”). A trademark examiner refused the application on the basis that the mark disparaged persons of Asian descent and thus violated § 2a of the Lanham Act. The Trademark Trial & Appeal Board upheld the decision, despite Mr. Tam’s arguments the band adopted the name to reclaim the injurious term and alter its meaning. In re Simon Shiao Tam, 108 USPQ2d 1305 (TTAB 2013) [precedential].

Mr. Tam appealed the decision. Ultimately, the Federal Circuit en banc reversed the USPTO, striking down the restriction on disparaging trademarks as an unconstitutional restriction on speech. In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc) (vacating 785 F.3d 567). The U.S. Supreme Court granted certiorari, and affirmed.

The First Amendment Prevails

As the Supreme Court explained, the disparagement clause, “prohibits the registration of a trademark ‘which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.’” (ellipses in original, quoting § 1052(a)). The disparagement clause is perhaps best known as the prohibition that led the USPTO to twice order the cancellation of the Washington Redskins’ trademarks. The Washington Redskins also petitioned for certiorari while their case was still pending before the Fourth Circuit, but the Supreme Court declined to grant the unusual request to hear the case as a complementary companion to Mr. Tam’s.

Justice Alito delivered the opinion of the court, explaining that under the First Amendment, “speech may not be banned on the ground that it expresses ideas that offend.” All 8 participating justices joined the opinion in rejecting the USPTO’s argument that federal trademark registrations constitute government speech and are therefore immune to First Amendment review, holding instead: “Trademarks are private, not government, speech.”

In the remainder of his plurality opinion, joined by Chief Justice Roberts and Justices Thomas and Breyer, Justice Alito analyzed and rejected the government’s remaining arguments, discussed in our prior post, in favor of the disparagement clause:

  1. the federal trademark registration system is not a government subsidy program in which the government can selectively promote particular viewpoints;
  2. the system also is not a “government program”—an argument that combined tenets of the government speech and government subsidy doctrines;
  3. finally, assuming arguendo that trademarks are commercial speech to be analyzed under Central Hudson Gas & Elec. Corp. v. Publ. Serv. Comm’n of N.Y., 447 U.S. 557 (1980), rather than expressive speech, the disparagement clause would not survive an intermediate standard of scrutiny.

Writing separately and joined by Justices Ginsburg, Sotomayor, and Kagan, Justice Kennedy concurred in part and concurred in the judgment. This separate plurality opinion addressed the First Amendment’s restrictions on viewpoint discrimination. Declining to apply the intermediate standard for commercial speech, Justice Kennedy posited that even commercial speech is subject to heightened scrutiny where it is restricted or regulated on the basis of viewpoint. Similarly, in the concurrence’s view, the First Amendment prohibits viewpoint discrimination where the government intentionally solicits a “diversity of views from private speakers,” and is not a program advancing a government message.

The Tam ruling is limited in scope to trademark registration and the disparagement clause, and does not address other provisions within the Lanham Act. Both Justice Alito’s and Justice Kennedy’s opinions confirmed the ruling has no bearing on the false advertising and unfair competition causes of action under the Lanham Act.

In striking down the 70-year-old disparagement clause, the Supreme Court has both affirmed the primacy of First Amendment protections on speech, and potentially opened the door to an official sanction of registered marks that some may find offensive. Of course, the ruling does not prevent – and probably encourages – consumers and activists who find a mark offensive from expressing their own views with more speech (and with their pocket books).

In the meantime we hope, the Slants and Mr. Tam will rock-on.

For further reading, see our posts:

  1. PTO not required to register disparaging trademark until cert deadline passes (Apr. 14, 2016)
  2. Supreme Court asked to review disparaging trademarks decision (Apr. 21, 2016)
  3. Redskins seek to join Slants case at Supreme Court (Apr. 29, 2016)
  4. Federal court affirms cancellation of Redskins’ trademark (July 9, 2016)
  5. UPDATE: SCOTUS will review ban on offensive marks (Sep. 29, 2016)
  6. Redskins won’t join Slants’ trademark case at SCOTUS (Oct. 3, 2016)
  7. USPTO files opening brief in Slants case (Nov. 14, 2016)
  8. INTA files amicus brief with SCOTUS in Slants case (Dec. 21, 2016)