{"id":142,"date":"2017-06-27T12:57:16","date_gmt":"2017-06-27T12:57:16","guid":{"rendered":"https:\/\/www.apslaw.com\/its-your-business\/?p=142"},"modified":"2023-04-25T16:24:55","modified_gmt":"2023-04-25T20:24:55","slug":"supreme-court-first-amendment-protects-disparaging-trademarks","status":"publish","type":"post","link":"https:\/\/www.apslaw.com\/its-your-business\/2017\/06\/27\/supreme-court-first-amendment-protects-disparaging-trademarks\/","title":{"rendered":"Supreme Court: First Amendment Protects \u201cDisparaging\u201d Trademarks"},"content":{"rendered":"

Since its enactment as the basic federal law on trademarks in 1946, the Lanham Act has prohibited the registration of \u201cderogatory\u201d trademarks with the United States Patent and Trademark Office (USPTO).\u00a0 On June 19, 2017, the United States Supreme Court found that restriction to be an unconstitutional violation of the First Amendment.\u00a0 The decision, Matal v. Tam<\/em>, No. 15-1293, 582 U.S. ___, 2017 WL 2621315 (2017), unanimously held that the government violated the First Amendment when it discriminated among trademark applications based on the content of the trademarks.\u00a0 Although not explicitly examined by the Supreme Court, it seems likely that another, similar Lanham Act provision prohibiting the registration of marks that contain \u201cimmoral [or] scandalous matter\u201d also would be deemed unconstitutional under the First Amendment.<\/p>\n

This case arose out of Simon Tam\u2019s application to register the trademark THE SLANTS.\u00a0 Mr. Tam was the lead singer of a rock band by the same name, composed of Asian-American members. \u00a0The USPTO had concluded, and the Supreme Court accepted, that \u201cslants\u201d is considered a derogatory term for people of Asian descent.\u00a0 The band opted to call themselves \u201cThe Slants\u201d in order to \u201c\u2018reclaim\u2019 the term and drain its denigrating force.\u201d\u00a0 Id<\/em>. at *5.\u00a0 The USPTO denied the application based on the disparagement clause of the Lanham Act, which prohibits the registration of marks that \u201cmay disparage\u2026or bring\u2026into contemp[t] or disrepute\u201d any \u201cpersons, living or dead.\u201d \u00a015 U.S.C. \u00a7\u00a01052(a).<\/p>\n

The Supreme Court\u2019s unanimous conclusion that the disparagement provision was unconstitutional is particularly notable in light of the numerous judges and other authorities who had upheld the provision and rejected Mr. Tam\u2019s application.\u00a0 Mr. Tam appealed the denial of registration to the Trademark Trial and Appeal Board, a component of the USPTO, which affirmed the decision refusing registration.\u00a0 Mr. Tam appealed again, to the United States Court of Appeals for the Federal Circuit, which initially ruled against him in a 3-0 decision, although one of the judges issued a concurring opinion in which he called for a reexamination of the constitutionality of the disparagement provision of the Lanham Act.\u00a0 In re Tam<\/em>, 785 F.3d 567 (Fed. Cir. 2015).\u00a0 The Federal Circuit subsequently reviewed Mr. Tam\u2019s case en banc <\/em>and reversed on the grounds that the disparagement clause violates the First Amendment.\u00a0 \u00a0In re Tam<\/em>, 808 F.3d 1321 (Fed. Cir. 2015).\u00a0 Even then, two of the judges on the Federal Circuit disagreed outright, arguing that the provision was constitutional, and another opined that the provision was unconstitutional as applied to Mr. Tam, but not in all cases.\u00a0 The Supreme Court was not so divided, affirming the judgment of the Federal Circuit unanimously and declaring the provision to be unconstitutional on its face.<\/p>\n

In its ruling, the Supreme Court explicitly rejected numerous arguments that had been advanced and previously accepted, at least by the USPTO and lower courts, as justifying the ban on registration of derogatory marks:<\/p>\n