(Drum)Sticks and Stones: Free Speech in Trademarks after Matal v. Tam

Written by Kate Dachille

The First Amendment and boundaries of free speech are on everyone’s minds these days, and the trademark world is no exception.

In what is being considered a touchdown (pun 100% intended) for trademark owners, the Supreme Court recently declared unconstitutional a portion of the Lanham Act, a law which had allowed the United States Patent and Trademark Office (USPTO) to deny trademark registration on the grounds that the mark was offensive. Specifically, the portion of the law at issue allowed the USPTO (a government body) to refuse to register trademarks “[consisting] of or [comprising] immoral, deceptive, or scandalous matter; or which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This section, known as the “disparagement clause,” along with a few other sections of the Lanham Act, enabled the USPTO to “bar certain delineated types of trademarks from being registered on the principal register.”  While registrants might still obtain common law or state law trademark protection, this does not provide the same benefits that come with being a registered mark.

So, what exactly is considered “offensive” or “disparaging” in the eyes of the USPTO?

In determining whether a mark is considered disparaging under the disparagement clause, an examining attorney at the USPTO will engage in a 2-part test, as follows: (1) determining “whether the likely meaning of the mark refers ‘to identifiable persons, institutions, beliefs, or national symbols;'” and, if so, (2) “whether ‘a substantial composite…of the referenced group would find the proposed mark…to be disparaging in the context of contemporary attitudes.”  This test had been applied potentially inconsistently, but with little to no resistance from trademark holders over the years, until the Washington Redskins had their mark cancelled by the USPTO.  While the original case was brought waaaay back in 1992 (basically the Stone Age. I mean, what did people do before Snapchat, really?), it wasn’t until 2014 that the cancellation occurred.  The team went on to appeal and ultimately have the U.S. Supreme Court decline to hear the case, and then a timeout was called when the next disparagement clause case hit the dockets.

Courtesy of

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This case involved a band which calls themselves The Slants, and which is comprised entirely of Asian-American members.  Before you go there, Simon Tam, the band’s leader (and plaintiff in the case), is way ahead of you: he says the band purposely chose this seemingly offensive name, as a means to “reclaim” the traditionally racially disparaging term, and “drain its denigrating force.” However, this was not music to the ears of the USPTO, who refused to register the mark (and also ruled against the plaintiff in his appeal to the Trademark Trial and Appeal Board), citing the Lanham Act provision discussed above.  The plaintiff then appealed to the Federal Circuit, and, at the time, the court agreed with the USPTO examining attorney’s assessment that the mark was unregistrable.

Subsequently, the Federal Circuit “sua sponte ordered an en banc rehearing on whether Section 2(a) [the ‘disparagement clause’ of the Lanham Act] violates the Constitution’s First Amendment.” The court changed its tune this time around: using the test for assessing government regulation of speech (the “strict scrutiny test”), the court found that this section failed the test.  Holding that the section was unconstitutional and violated the First Amendment, the court went on to say that “allowing refusal of a trademark based on personal judgment of [the expressive content contained in the mark] makes [the section] invalid on its face as discriminatory.”  The U.S. Supreme Court granted certiorari to hear the case, hearing oral arguments in January 2017 and rendering the decision in June of this year.

In unanimously ruling for the plaintiff, the Court focused in on the disparagement clause and whether the language within this clause violated the free speech clause of the First Amendment.  Wholly unimpressed by the government’s argument that trademark registration is a form of government speech, such that it can decline to engage in speech it disagrees with, the Court found that trademarks “have not been used by governments historically to convey state messages; they are not closely identified in the public mind with governments, but rather with private enterprises; and the government foes not maintain any direct control over the views expressed in marks.”

The Court went even further to provide that the “government cannot transform private speech into government speech by merely having some government involvement in the speech” — such a conclusion would have rendered the government “babbling prodigiously and incoherently” as they could not be saying the messages contained in the millions of registered trademarks at one time.  The court then discussed the potential for a slippery slope in “other registration-based regimes, such as copyright” if their reasoning had been reversed, posing the question that”[i]f federal registration makes a trademark government speech and this eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?”

While this ruling was made in the context of trademark, the implications of the ruling are much wider-reaching than that.  Granted, the Redskins are more than happy with the outcome, but so are those outside the media and sports arenas.  Indeed, most First Amendment advocates (including the ACLU) were pleased to find an ally in the Supreme Court with this ruling.  Had the decision come out the other way, some argue, “we would have had a government mandate that if one bureaucrat — in this case, from the United States Patent and Trademark Office — finds your speech to be offensive, the force of the entire federal government may use its weight to suppress your speech.”  The results would be disastrous, with the government having the power to pick and choose which marks are deemed acceptable, based on some arbitrary criteria.  While there is some concern that the ruling will result in an influx of racially offensive or otherwise insensitive marks to be registered, it appears the general consensus that (1) this is not very likely (and generally wouldn’t be a great business decision on the part of the trademark owner); and, (2) the benefits conferred by the First Amendment far outweigh the risks of allowing only a small amount of these marks to be federally registered.

So, while this country continues to find and test the boundaries of free speech, the First Amendment is alive and well — at least in the case of trademarks.

About the author

Kate Dachille

Kathryn (Kate) Dachille is an attorney specializing in the areas of intellectual property, marketing, and advertising, with a keen interest in entertainment, sports, fashion and media. She is a graduate of the University of Richmond School of Law (J.D., summa cum laude, Intellectual Property concentration), and New York University (B.A., Economics).

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