Alerts and Updates
Defending the Offensive: SCOTUS Defends Right to Register Offensive Trademarks
June 22, 2017
The United States Supreme Court’s recent decision in Matal v. Tam reinforced what Justice Samuel Alito termed a First Amendment “bedrock” in which “[s]peech may not be banned on the ground that it expresses ideas that offend.”
All eight participating justices sided with respondent Simon Tam, founder of dance-rock band “The Slants,” and held that the U.S. Patent and Trademark Office could not refuse trademark registration of the band’s name under Lanham Act Section 2(a), also known as the disparagement clause.
The Court held that the clause, which prohibits federal registration of trademarks that “disparage” or “bring … into contempt or disrepute” any “persons, living or dead,” violates the First Amendment’s Free Speech Clause and constitutes viewpoint discrimination. Justice Alito described the clause’s damning breadth: “[It] reaches any trademark that disparages any person, group, or institution … [It] goes much further than is necessary to serve the interest asserted.” The justices also disagreed with the government petitioner’s argument that federal trademark registration is government speech, which is exempt from First Amendment scrutiny.
With the clause struck down, the Trademark Office is likely to see an influx of applications to register marks that will be offensive to some. But respondent Tam pushed back on this argument: “[T]he idea that our market will be flooded by people who just want to register marks on a whim is ridiculous … people have to have an established business purpose, pay the fees, go through the paperwork and have their information in public.”
The decision may also have a direct impact on another high-profile trademark controversy, the scheduled cancellation of the Washington Redskins’ trademarks. Cancellation of the marks is currently pending review in the Court of Appeals for the Fourth Circuit. But this case factually differs from Tam, in that it addresses marks opposed through a two-party proceeding in front of the Trademark Office’s Trial and Appeal Board. Indeed, an attorney for the Native American groups opposing the Redskins marks stated, “Nothing in the opinion undermines the decision of the [Patent and Trademark Office appeal board],”  preferring to view the Tam decision as narrow, and not excluding, registration of every offensive trademark.
The opinion also does not mention how the ruling may affect registrations of marks that are considered immoral or scandalous, but do not disparage a particular group; that issue was not before the Court.
For Further Information
If you have any questions about this Alert, please contact Christiane Schuman Campbell, Dana Pellegrino, any other member of the Trademark, Copyright, Entertainment and Advertising Practice Group or the attorney in the firm with whom you are regularly in contact.
 Smith, A. (2017, June 19). 'Matal v. Tam': Supreme Court decision lifts ban on registering disparaging trademarks. Retrieved from https://mic.com/articles/180313/matal-v-tam-supreme-court-decision-lifts-ban-on-registering-disparaging-trademarks
 Barnes, R. (2017, June 19). Supreme Court: Rejecting trademarks that ‘disparage’ others violates the First Amendment. Retrieved from https://www.washingtonpost.com/politics/courts_law/supreme-court-rejecting-trademarks-that-disparage-others-violates-the-first-amendment/2017/06/19/26a33ffa-23b3-11e7-a1b3-faff0034e2de_story.html
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