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Portland Band The Slants Singing a Happy Tune After the Supreme Court Unanimously Holds That the Disparagement Clause Violates the First Amendment



Yesterday, six months after hearing oral argument (and nearly six years after Simon Tam filed his trademark application for "THE SLANTS"), the U.S. Supreme Court unanimously affirmed the U.S. Court of Appeals for the Federal Circuit's en banc decision in In re Tam, holding that the disparagement clause in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment.

The Supreme Court's decision in the Matal v. Tam case (formerly called In re Tam and Lee v. Tam) concerns Simon Tam's application for a federal trademark registration of his band's name, "The Slants." Tam is the founder of The Slants, a dance-rock band whose members are all Asian-American. The band members believe that by using the term "slants," a derogatory term for persons of Asian descent, as the name of their group, they will help "reclaim" the term and "drain its denigrating force."

The Patent and Trademark Office (PTO) denied Tam's application for "THE SLANTS" trademark based on Section 2(a), which prohibits the registration of trademarks that may disparage or bring into contempt or disrepute any persons, living or dead. The Trademark Trial and Appeal Board (TTAB) affirmed the PTO's refusal to register that mark. After exhausting the administrative appeals process, the band tried its luck with the federal appellate court, which eventually found that—even though registration of the mark "may lead to the wider registration of marks that offend vulnerable communities"—the disparagement clause is facially unconstitutional under the First Amendment's Free Speech Clause.

The government filed a petition for writ of certiorari, which the Supreme Court granted to decide "whether the disparagement clause 'is facially invalid under the Free Speech Clause of the First Amendment.'"

The disparagement clause provides, in part:

"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—

"Consists 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 * * *." (Emphasis added.)

The Opinion
Justice Alito, writing for the Court, began by emphasizing that the current federal trademark system (under the Lanham Act) "helps to ensure that trademarks are fully protected and supports the free flow of commerce." The Court also highlighted the important legal rights and benefits federal registration confers on trademark owners.

Before diving into the parties' main arguments, the Court brushed away Tam's strict textual argument that the term "persons" as used in Section 2(a) applied only to individual people, not to groups of people (e.g., racial or ethnic groups). The Court wrote that this argument would "lead[] to the absurd result that no person is a 'person' within the meaning of the disparagement clause." (In his concurring opinion, Justice Thomas wrote that he would have declined Tam's invitation to address this argument, noting that it was not preserved on appeal.)

The Court then addressed the government's three main arguments. We discuss here only the government's argument that trademarks are government speech, not private speech. The government put forth this argument because, unlike private speech, government speech is not regulated by the First Amendment—a necessity if the government wants "to stake out positions and pursue policies." The Court disagreed with the "government speech" argument, concluding that trademarks are private, not government speech. The Court added that it exercises great caution before extending the government-speech precedents because if private speech could be passed off as government speech by simply affixing a government seal of approval, the government could silence or muffle the expression of disfavored viewpoints. In this case, the Court determined that in the case of federal trademark registration,

"[I]t is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. * * * It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public."

Next, the Court wrote that it did not need to resolve the dispute over whether trademarks are commercial speech subject to the relaxed scrutiny test outlined in Central Hudson Gas & Elect. v. Public Serv. Comm’n of N. Y., 447 U.S. 557, because the disparagement clause cannot withstand even Central Hudson review. Under Central Hudson, a restriction of speech must serve "a substantial interest" and be "narrowly drawn."

The government had put forth the argument that it has a substantial interest in preventing speech that offends. The Court wrote that this idea strikes at the heart of the First Amendment: "Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express 'the thought that we hate.'"

The government also asserted a substantial interest in protecting the orderly flow of commerce from disruption caused by trademarks that support invidious discrimination. The Court had a simple answer for this argument as well: the clause, which reaches any trademark that disparages any person, group, or institution, is not narrowly drawn.

Although some may find the Court's logic to be "largely incomprehensible," the Court's holding is clear: the disparagement clause violates the First Amendment because the clause "offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."

Notably, however, the Supreme Court addressed only the disparagement clause of Section 2(a). The Court did not directly address the "immoral" or "scandalous" components of Section 2(a), which the PTO also relies on regularly to refuse registrations. It remains to be seen whether this decision will have a significant impact on the "immoral" and "scandalous" components, and the PTO is expected to provide guidance on the topic in light of this decision.

Justice Kennedy wrote a concurring opinion, which Justices Ginsburg, Sotomayor, and Kagan joined. The concurrence deviates from Justice's Alito's opinion in that the concurrence appears to take the approach that the government cannot restrict speech except in narrowly-defined circumstances, and this is not one of those circumstances. Justice Alito, on the other hand, appears to leave open the door to speech restrictions in other contexts.

Justice Thomas wrote separately to note (a) the failure to preserve an issue for appeal and (b) to state that strict scrutiny should be applied, even if the speech at issue is commercial.

What's Next?
For now, Tam and his bandmates are celebrating their victory. The band members are not alone in celebrating; they are joined by the National Football League’s Washington Redskins, which yesterday issued a statement—citing the Matal decision—declaring victory in its long-standing dispute involving the disparagement clause. The Matal decision will likely help the team revive its registrations, which were cancelled by the PTO as disparaging in 2014.

The Matal decision will also likely reactivate many trademark applications—refused on "disparagement" grounds—that were suspended by the PTO pending the outcome of this case. Finally, we can expect a wave of "disparaging" trademark applications to hit the PTO in the coming months.

If you have questions about this case or trademark registration generally, please let us know. We would love to help.

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