Free Speech Trumps The Lanham Act’s Disparagement Clause

The Supreme Court on June 19, 2017 unanimously ruled that the United States Patent and Trademark Office’s (“USPTO”) denial of a service mark application for the term “The Slants” on the basis of the disparagement clause (15 U.S.C. §1052(a)) was incorrect, and that the disparagement clause violates the First Amendment. Matal v. Tam, No. 15-1293 (U.S. Jun. 19, 2017). The Court’s decision struck down the disparagement clause of the Lanham Act’s § 2a, a rule in effect since 1946, as discrimination based on unpopular speech.

Simon Tam filed a trademark application for his band, known as “The Slants.” The word “slants” can be a “derogatory term for persons of Asian descent.” Id. at 1. The USPTO denied the application because the term “The Slants” may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” Id. at 1-2 (quoting 15 U.S.C. § 1052 (a)).

The USPTO applies a two-part test when deciding whether a trademark is disparaging. TMEP §1203.03(b)(i) (8th ed. Apr. 2017), available at First, the examiner should consider “the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace….” Matal, slip op. at 6 (quoting TMEP § 1203.03 (b)(i)). If the meaning of the mark “is found to refer to ‘identifiable persons, institutions, beliefs or national symbols,’ the examiner moves to the second step.” Id. (quoting TMEP § 1203.03(b)(i)) (internal quotation marks omitted). This step consists of “asking ‘whether that meaning may be disparaging to a substantial [component] of the referenced group.’” Id. (quoting TMEP § 1203.03(b)(i)). A prima facie case of disparagement is found when a “substantial [component], although not necessarily a majority, of the referenced group would find the proposed mark … to be disparaging in the context of contemporary attitudes.” Id. (quoting TMEP § 1203.03(b)(i)) (internal quotation makrs omitted).

Tam appealed the USPTO’s decision to the U.S. Court of Appeals for the Federal Circuit. That Court sitting en banc held that the disparagement clause violated the First Amendment’s guarantee of free speech. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc). The Federal Circuit held that the government may not “penalize private speech merely because it disapproves of the message it conveys.”Id., at 1327. The Supreme Court granted the USPTO’s writ of certiorari.

In an opinion by Justice Samuel Alito, the Supreme Court affirmed the Federal Circuit’s decision that the disparagement clause violates the First Amendment’s guarantee of free speech. A unanimous Court held that the disparagement clause “violates the Free Speech Clause of the First Amendment . . . [because] . . . [i]t offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Matal, slip op. at 1–2.

The Court’s opinion analyzed three main arguments in determining the unconstitutionality of the disparagement clause: (1) whether trademarks are government speech, as opposed to private speech; (2) whether trademarks are a form of government subsidy; and (3) whether the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine. Id. at 12. The Court rejected all three arguments.

According to the Court’s ruling, trademarks are private speech—not vernment speech. See 12-18. While trademarks are registered by the USPTO, a government agency, the Federal Government “does not dream up these marks, and it does not edit marks submitted for registration,” except as required by 15 U.S.C. §1052(a). Id., at 14. Furthermore, a trademark examiner “does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy . . . .” Id. Indeed, registration of a mark does not constitute approval of a mark. Id., at 15 (citing In re Old Glory Condom Corp., 26 U.S.P.Q.2d 1216, 1220, n.3 (T.T.A.B. 1993)). The Court commented that, “[i]f private free speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.” Id. at 14.

Trademarks were also determined not to be a form of government subsidy, as the government does not confer a pecuniary benefit upon the trademark applicant. See id. at 19. The government argued that the facts of this case should be governed by case law holding that government subsidized speech can express a particular view point. Id. at 18–19. The Court disagreed that the facts here fell within government subsidized speech. Id. at 19. Those cases, the Court explained, all involve cash subsidies or their equivalent. Id. But unlike cash subsidy cases, the USPTO does not pay money to parties seeking registration of a mark—rather, the applicant pays a filing fee to the government. Id. The Court was unpersuaded by the government’s argument that “registration provides valuable non-monetary benefits ‘that are directly traceable to the resources devoted by the federal government to examining, publishing, and issuing certificates of registration for those marks.’” Id. (internal citation omitted). The Court noted that the majority of government services require the use of government funds, such as police and fire protection and the use of public parks and highways. Id. at 19–20.

Finally, the government argued that the disparagement clause should be upheld as “a new doctrine that would apply to ‘government-program’ cases.” Id. at 20. Essentially, the request was one for the creation of a broader doctrine that would be applied to trademark registrations. See Id. The two cases cited by the government were those “involving a public employer’s collection of union dues from its employees,” which the Court found neither helpful nor compelling. Id. Instead, the Court restated the constitutional tenet that the public expression of ideas may not be prohibited simply because some members of the public find the ideas to be offensive. Id. at 22–23.

The Supreme Court’s rejection of the constitutionality of the disparagement clause thus opens the door to trademarks that may have previously been rejected by the USPTO, expanding the understanding of free speech as it pertains to these applicants.