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For Better or Worse, the First Amendment Protects Disparaging Trademarks

Alyson J. Letsky
7/31/17

trademark    On June 19, 2017, the U.S. Supreme Court unanimously ruled in Matal v. Tam that the disparagement clause of 15 United State Code 1052(a) (a.k.a. Lanham Act) which prohibits the registration of trademarks that may disparage persons, living or dead, is an unconstitutional violation of the Free Speech Clause of the First Amendment.  The case stems from a federal trademark application filed by Simon Shiao Tam.  Tam, the leader of an Asian American rock band called "The Slants," sought to register his band’s name with the United States Patent and Trademark Office (USPTO). Although the band was named with the intention of reclaiming the Asian stereotype, the USPTO refused to register Tam’s trademark under section 2(a) of the Lanham Act.  The USPTO acknowledged Tam’s attempt to "appropriate the disparaging term," but asserted "a substantial composite of persons of Asian descent would find the term offensive." 

    The case eventually made its way to the U.S. Supreme Court, where the Court held speech may not be prohibited simply on the ground that it expresses ideas that offend.  Critical to its ruling was the majority’s finding that trademarks are private, not government speech, clarifying the outer bounds of the government-speech doctrine.  (In Walker v. Texas Div., Sons of Confederate Veterans, Inc. the U.S. Supreme Court held license plates constitute government speech, effectively marking the outer bounds of the government-speech doctrine.) The government generally, unless it can overcome a certain level of scrutiny, must maintain viewpoint neutrality on private speech.  The government faced an overwhelming challenge in attempting to overcome intermediate or heightened scrutiny to justify its burdening of private speech—it simply cannot restrict the expression of only disfavored viewpoints. 

    The biggest winner of the Tam decision?  The Washington Redskins, of course.  For years, the owner and operator of the NFL’s Washington Redskins has been embroiled in litigation and a public debate as to its rights to own and use the Redskins trademarks.  In June 2014, the USPTO canceled the team’s six registered trademarks pursuant to the disparagement clause and the team eventually appealed the case to the U.S. Court of Appeals for the Fourth Circuit, where the case was stayed pending a decision in Tam.  Not surprisingly, on June 29, 2017, the Justice Department abandoned its legal fight defending the decision to deny the Redskins trademark registrations.  One day later, the group of Native Americans who originally brought suit to cancel the Redskins trademark registrations dropped their suit.  This U.S. Supreme Court decision marks the end of the legal battle, but perhaps not the controversial image, surrounding the team’s name.  

    However, the U.S. Supreme Court’s decision in Tam does leave some uncertainty.  While the Court did establish that trademarks are not a form of government speech or government subsidy, the Court did not clarify if trademarks are commercial speech or determine what level of scrutiny should apply to such government restrictions on trademarks.  Additionally, as section 2(a) of the Lanham Act also prohibits the registration of trademarks that contain immoral or scandalous matter, it is unclear how the Tam decision will impact trademarks that are scandalous or immoral.  There is a case pending before the Federal Circuit that likely will address this issue.  Specifically, in In re Brunetti, a trademark applicant, who filed an amicus brief in support of Tam in the Tam case, appealed the USPTO’s refusal to register his trademark "FUCT" on the basis that it is "vulgar" under section 2(a) of the Lanham Act, so perhaps we will have an answer soon.

    Should you have any questions regarding the Tam decision or other trademark issues, please contact Alyson J. Letsky.  C. Awele Nwajei, a third year law student at The Ohio State University, contributed to this article.

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    Disclaimer: This alert has been prepared by Eastman & Smith Ltd. for informational purposes only and should not be considered legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney/client relationship.

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