914-908-6757 anthony@vernalaw.com

Simon Tam, the lead singer of The Slants, chose his band’s name in order to “reclaim” the term and “drain its denigrating force as a derogatory term for Asian persons.” In 2011, he attempted to trademark the name, but the U.S. Patent and Trademark Office refused registration on the ground that it violated the prohibition on trademarks that “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead” under the Lanham Act.

Importantly, nothing stopped Tam from exclusively using The Slants for the name of his band and from stopping others from using The Slants, should he choose to do so, by asserting a claim for unfair competition or false designation of origin under 15 U.S.C. § 1125. When a mark is not registered, it is called a common-law trademark.  However, Tam was not entitled to the benefits accompanying a federal registration, of which there are many.  Those benefits are listed at this link.  The law at issue in both cases denies federal trademark protection to messages that may disparage people, living or dead, along with “institutions, beliefs or national symbols.”

The case is Matal v. Tam (the opinion is here:  https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf).  In the case, four justices said the law could not withstand even the fairly relaxed judicial scrutiny that the Supreme Court applies to commercial speech. Those justices rejected the two government interests that the law was said to advance: protecting disadvantaged groups from demeaning messages and the orderly flow of commerce.

The First Amendment protects offensive speech, Justice Samuel A. Alito Jr. wrote for this group of four justices. “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,’ ” he wrote, quoting a classic 1929 dissent from Justice Oliver Wendell Holmes Jr.

The U.S. Patent and Trademark Office held a position that registration of trademarks converts the mark into “government speech” that can be regulated based on the viewpoint that it appears to express.  The Supreme Court disagreed.  “The Federal Government does not dream up the trademarks registered by the PTO. Except as required by §1052(a), an examiner may not reject a mark based on the viewpoint that it appears to express. If the mark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory. And once a mark is registered, the PTO is not authorized to remove it from the register unless a party moves for cancellation, the registration expires, or the Federal Trade Commission initiates proceedings based on certain grounds. It is thus far-fetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently. And none of this Court’s government-speech cases supports the idea that registered trademarks are government speech. Johanns v. Livestock Marketing Assn. , 544 U. S. 550; Pleasant Grove City v. Summum, 555 U. S. 460; and Walker v. Texas Div., Sons of Confederate Veterans, Inc., 576 U.S. ___, distinguished. Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine, for other systems of government registration (such as copyright) could easily be characterized in the same way.”

Justice Alito added that the law’s disparagement clause was far too broad. “It is not an anti-discrimination clause; it is a happy-talk clause,” he wrote.

Chief Justice John G. Roberts Jr. and Justices Clarence Thomas and Stephen G. Breyer joined that part of Justice Alito’s opinion.

Four other justices would have struck down the law using the more searching First Amendment scrutiny that applies to viewpoint discrimination.

“The danger of viewpoint discrimination,” Justice Anthony M. Kennedy wrote, “is that the government is attempting to remove certain ideas or perspectives from a broader debate. That danger is all the greater if the ideas or perspectives are ones a particular audience might think offensive, at least at first hearing.”

“To permit viewpoint discrimination in this context is to permit Government censorship,” Justice Kennedy wrote.

Justices Ruth Bader Ginsburg, Sonia Sotomayor and Elena Kagan joined Justice Kennedy’s opinion.

Some people have asked what, exactly, this means.  On one hand, the Tam decision does mean that any offensive trademarks may be registered.  Very quickly, the suit to cancel the Washington Redskins case was dropped. Just two days after the Supreme Court published its opinion, the clerk of the court for the Fourth Circuit wrote to the parties, asking for their views on whether the need for oral argument remained in light of Tam.

In response, the Redskins told the court that because Section 2(a) was the USPTO’s sole basis for concluding their marks were not eligible for registration, “Tam thus mandates reversal of the district court’s judgment.” The team requested that the court reverse the judgment, vacate the order to cancel the trademark registrations, and remand the case with instructions to grant summary judgment to the Redskins. Putting an end to the long-running litigation, counsel for the Native Americans reached a similar conclusion. “We agree with Appellant that the Supreme Court’s decision in [Tam] is controlling,” the plaintiffs wrote. The plaintiffs, several Native Americans, consented to the end of the case.

There have also been a flood of trademark applications with offensive words.  Frankly, this is not some crisis of confidence in the trademark system.  Many applications will be filtered out because the applications are not serious or the applicant has no intention of making the goods/services provided or the applicant will not know how to make its way through the application process.  And there have always been applications with offensive terms in them – but those applications will receive the protection in their goods/services.

There are products and services that are for niche consumers in which these trademarks may offend the general public, but not the intended consumer.  Or these trademarks may be attempts to reclaim certain words, of which those groups may reclaim.

The First Amendment allows these marks to be registered, but that is not condoning what the marks may mean, either.