The Effect of Matal v. Tam on “Disparaging” Trademarks

On June 19, 2017, the United States Supreme Court unanimously ruled that the United States Patent and Trademark Office’s prohibition against disparaging trademarks “violates the Free Speech Clause of the First Amendment.” The case, Matal v. Tam, 582 U.S. _____ (2017), arises out of a federal lawsuit filed by Simon Tam, front man of the Asian-American rock band styled “The Slants.”

Tam filed his suit after the USPTO denied his application for federal registration of the trademark “THE SLANTS” because it violated the Lanham Act’s disparagement clause (15 U.S.C. §1052(a)). Tam chose the name in order to “reclaim” the term and drain its denigrating force as a derogatory term for Asians.

Writing for the Court, Justice Alito concluded that trademarks are private, not government speech. According to Alito, to hold that the registration of a trademark converts the mark into government speech, merely because the government affixes a seal of approval, would constitute a large and risky extension of the government-speech doctrine:

“There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.”

The case is receiving a good amount of attention nationwide, as it may potentially clear the way for other controversial trademarks, such as the NFL’s Washington Redskins. The USPTO had previously cancelled the team’s trademark registrations in response to a petition filed by a group of Native Americans, who presented evidence that the term was offensive and a slur. The lawsuit over the validity of the “REDSKINS” trademark is currently pending in the U.S. Circuit Court of Appeals for the Fourth Circuit, which was postponed in anticipation of the Supreme Court’s decision in the Tam case.

While the Tam opinion certainly opens the door to the protection of controversial and potentially offensive marks, the decision reestablishes the strong protection the Court will grant free speech in the marketplace. It will be the responsibility of consumers to be part of the marketplace that rejects those marks and companies they find offensive.

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Robert Martin Jr. is an associate of Alston Hunt Floyd & Ing, with a practice in intellectual property litigation and transactions.