The Lanham Act has prohibited federal registration of “disparaging” trademarks for more than 70 years. But last month, the Supreme Court’s Matal v. Tam decision upended decades of practice, finding instead that the limitation was an unconstitutional restriction on speech.
The Band Who Must Not Be Named
In 2006, an Asian-American dance-rock band was just getting started in Portland, Oregon. They called themselves The Slants, a carefully selected yet provocative title intended to reclaim a racial slur against people of Asian descent. To the band, this name was symbol of cultural pride, a way to use their musical talents to engage in political discussions about race and society.
As many entities do—musical and otherwise—The Slants sought federal trademark protection pursuant to the Lanham Act. And here’s where the problem lies: Section 2 of the Lanham Act limits what marks are eligible for federal registration, including a bar on the registration of marks that contain “matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
When The Slants applied for a trademark on their name, the U.S. Patent and Trademark Office (USPTO) examiner denied the application as disparaging toward Asian-Americans, a decision that was affirmed by the Trademark Trial and Appeal Board (TTAB). The band’s leader, Simon Shao Tam, appealed this ruling to the U.S. Court of Appeals for the Federal Circuit, which held that the disparagement infringement was unconstitutional under the First Amendment. The Slants’ battle was not over just yet, however: Several months later, the Supreme Court granted the U.S. government’s petition for certiorari.
The Supreme Court Weighs In
After a nearly eight-year legal fight, the Supreme Court unanimously affirmed the Federal Circuit’s judgment that the Lanham Act’s disparagement clause unconstitutionally infringes upon First Amendment rights.
Here, the government attempted to cast trademarks as “government speech,” and therefore outside of the scope of First Amendment protections. While the government may impose
content-based restrictions on government speech, the Supreme Court rejected the government’s attempt to lump trademarks in this category, calling the suggestion “far-fetched.” It emphasized the contradictory views expressed in issued marks, and compared the trademark regime to copyright registration. As the Supreme Court’s objective is to safeguard “a diversity of views from private speakers,” its “reliance must be on the substantial safeguards of free and open discussion in a democratic society.”
The government also argued that it was not required to subsidize activities that it did not wish to promote. But because trademark registration is not a cash subsidy (and, in fact, the applicant for registration actually pays the government a filing fee), the Supreme Court also rejected this argument.
Finally, in rejecting the government’s proposal for a new doctrine applicable to government programs, the Supreme Court engaged in a public forum analysis, which has also been applied in the context of school-sponsored publications. But the disparaging clause, which denies registration to any mark that is offensive to members of any group, impermissibly discriminates on the basis of viewpoint. The Supreme Court also declined to address whether trademarks are commercial speech subject to decreased constitutional protection, as the provision was not permissible even under lesser scrutiny.
Following the Supreme Court opinion, The Slants issued a statement concerning their journey from Portland to the country’s highest court:
For too long, people of color and the LGBTQ community have been prime targets under Section 2(a) of the Lanham Act, simply because we believe in the deliberate disarmament of toxic language and symbols. We’ve had to endure the Trademark Office working in isolation of our groups to navigate the troubled waters of identity politics and shifting language and culture, without any sense of cultural competency, consistency in enforcement of rules, and only giving the benefit of doubt to the most privileged members of society. Now, Americans can decide who should prevail in the marketplace of ideas rather than a lone examining attorney. Oppressed groups will no longer have their identities shaped the sensibilities of dominant ones.
When I started this band, it was about creating a bold portrayal of Asian American culture. The establishment of an Asian American band was a political act in of itself, even though we never considered ourselves as a political group. However, as we continued writing music about our experiences, we realized that activism would be integrated into our art as well. I’m proud our band members have helped raise over $1 million for issues affecting Asian Americans, that we’ve worked with dozens of social justice organizations, and that we could humanize important issues around identity and speech in new and nuanced ways. So we became part art and part activism.
The Slants have undeniably made a lasting impact on intellectual property law. Based on the Supreme Court’s reasoning, it unlikely that the Lanham Act’s comparable prohibitions on “immoral… or scandalous matter” will pass constitutional muster. As a result, the USPTO may see an influx in controversial trademark applications, including, for example, the Washington Redskins, whose trademark was previously canceled.
While the Supreme Court’s decision may not have any substantial effect on the daily practices of student journalists, it can certainly be considered a First Amendment win.
Had the case come out differently, the doctrine of “government speech” — that speech loses its protection against government regulation when its message is attributable to the government — might have invited danger for people who use government property to convey their messages. And importantly for student journalists, the decision may signal a Court that is willing to go beyond established statutory regimes and government practices to protect First Amendment rights.
Lindsay Church is an associate in Alston & Bird’s Intellectual Property practice and a member of the SPLC’s Attorney Referral Network. She is the author of “Government Subsidies and Intellectual Property Rights: Confining the Applicability of the Subsidies Doctrine to Cash Benefits,” published by the Harvard Journal of Law & Technology. In law school, Lindsay was a Human Rights Fellow at the Medial Legal Defence Initiative in London, and conducted research on the freedom of expression while a visiting student at the University of Oxford’s Programme in Comparative Media Law & Policy.