SCOTUS: Provision Barring Registration of Disparaging Trademarks Unconstitutional

June 19, 2017 | Michael C. Cannata | Frank M. Misiti | Intellectual Property

It has been a long road for Simon Tam and his bandmates in the rock group “The Slants.”  Back in November 2011, Tam filed a trademark application for THE SLANTS for use in connection with “entertainment in the nature of live performances by a musical band.”  In doing so, Tam hoped to reclaim the otherwise derogatory slur in order to eliminate its denigrating impression.

But the U.S. Patent and Trademark Office, relying on 15 U.S.C. § 1052(a), known as the “disparagement clause,” denied Tam’s trademark application.  That section precludes the registration of any trademark that may “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

Tam unsuccessfully sought review of the denial of his trademark application through administrative channels.  However, he appealed to the Federal Circuit where he secured a favorable ruling.  Specifically, the en banc Federal Circuit held that the disparagement clause violated the First Amendment’s Free Speech Clause.

Today, in an opinion delivered by Justice Alito, the U.S. Supreme Court affirmed the judgment of the Federal Circuit.

At the outset, the Supreme Court rejected Tam’s argument that the disparagement clause does not extend to trademarks that disparage racial or ethnic groups. Tam argued that the disparagement clause only applies to “persons” and that the term “persons” only means natural and juristic persons, not racial or ethnic groups. Although Tam had not raised this argument in the lower courts, the Supreme Court, nevertheless, chose to address, and reject, this argument. In rejecting this argument, the Supreme Court looked to the plain language of the disparagement clause which applies broadly to “persons.”  To further refute the narrow reading of the disparagement clause endorsed by  Tam, the Supreme Court also noted that the disparagement clause extends beyond “persons” to “institutions” and “beliefs.”

But after concluding that the disparagement clause applies to racial and ethnic groups, the Supreme Court went on to reject all of the arguments advanced by the government which sought to uphold the constitutionality of the disparagement clause.

First, the government argued that trademarks are government speech, not private speech, and, thus, the government was not required to maintain viewpoint neutrality. The Supreme Court rejected this argument concluding that “if private 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.”  In concluding that trademarks are private speech, the Supreme Court reasoned that “trademarks have not traditionally been used to convey a Government message…” and, if they were, the result would be that “the Federal Government is babbling prodigiously and incoherently.”

Second, the Supreme Court rejected the government’s attempt to draw an analogy to those cases in which the Supreme Court “upheld the constitutionality of government programs that subsidized speech expressing a particular viewpoint.”  The Supreme Court found that this case was significantly different than the cases cited by the government — all of which involved cash subsidies or their equivalent — to support its government program argument.  The Supreme Court determined that the federal registration of a trademark is nothing like the cash subsidies at issue in the cases relied upon by the government. Rather, in this instance, the trademark applicant is required to pay money, not receive money, in order to file a trademark application. Further, the Supreme Court noted that trademark registration is not the only governmental registration scheme, as the government also registers copyrights and patents.

Third, the government argued that the Supreme Court should adopt a new doctrine that would apply to “government-program” cases. In support of this argument, the government relied upon two cases involving the collection and expenditure of certain union dues.  The Supreme Court rejected this analogy and noted that the two cases relied upon by the government occupy a special area of First Amendment law, far removed from the registration of trademarks. Going forward, the Supreme Court reiterated its position that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Thus, the disparagement clause cannot be salvaged by analyzing it as a type of government program in which content or speaker-based restrictions are permitted.

Since the Supreme Court determined that the disparagement clause cannot be sustained under government-speech, government-based subsidy cases or the “government-program” doctrine, it next addressed the government’s argument that trademarks are commercial speech and subject to relaxed scrutiny under Central Hudson. To the contrary, Tam argued that trademarks are more than commercial speech to the extent that they embody expressive components.

However, the Supreme Court held that it was unnecessary to determine whether trademarks are commercial speech because the disparagement clause could not withstand even relaxed scrutiny. The disparagement clause does not serve a substantial interest and it is not narrowly drawn. The disparagement clause is not drafted to drive out trademarks that support invidious discrimination. Rather, the clause reaches any trademark that may disparage any person, group or institution. “It is not an anti-discrimination clause; it is a happy-talk clause.”  Thus, the Supreme Court concluded that the disparagement clause goes much farther than necessary to serve the interest asserted and violates the Free Speech Clause of the First Amendment.

In closing, this decision is also of critical importance to the Washington Redskins, who are currently appealing the cancellation of certain of their federal trademark registrations, all of which feature some variation of the term REDSKINS, on the basis that the trademarks were disparaging to Native Americans.

Michael C. Cannata and Frank Misiti, together with other members of the New York Intellectual Property Law Association (“NYIPLA”), co-authored an amicus brief that was submitted to the Supreme Court on behalf of the NYIPLA for consideration in connection with Matal v. Tam.
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