Matal v. Tam: Supreme Court Invalidates Lanham Act Section Prohibiting "Disparaging" Trademarks
by Daniel B. Lifschitz
Matal v. Tam, No. 15–1293 (June 19, 2017)
For many years, 15 U.S.C. § 1052(a) prevented the registration of any federal trademark that "may disparage ... persons, living or dead, institutions, beliefs, or national symbols." While trademark practitioners and courts have long debated the metes and bounds of this prohibition on "disparaging" marks, the United States Supreme Court just drastically simplified the issue in Matal v. Tam, striking down the prohibition as a violation of the First Amendment.
In Tam, an Asian-American plaintiff had attempted to obtain a federal trademark on the name of his band "The Slants," which he chose "in order to 'reclaim' the term and drain its denigrating force as a derogatory term for Asian persons." When the registration was denied based upon § 1052(a), Tam took the matter all the way to the Supreme Court.
The Majority Opinion
In a unanimous opinion, the Supreme Court held that § 1052(a) "offends a bedrock First Amendment principle" -- that "[s]peech may not be banned on the ground that it expresses ideas that offend." Citing the inherent dangers of government picking winners and losers in the marketplace of ideas, the Court pushes back at the idea that trademarks, governing commerce, are meaningfully less expressive than copyrights, and thus any less worthy of being protected against censorship of ideas: "It is true that the necessary brevity of trademarks limits what they can say," the Court writes. "But powerful messages can sometimes be conveyed in just a few words." Moreover, "[t]he commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates." Thus, the Court warns that, "[i]f affixing the commercial label permits the suppression of any speech that may lead to political or social 'volatility,' free speech would be endangered."
For this same reason, the Court declines to extend a line of precedent concerning "government speech" to categorize the grant of a trademark as the imprimatur of the government itself. "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." Moreover, "if trademarks represent government speech, what does the Government have in mind when it advises Americans to 'make.believe' (Sony), 'Think different' (Apple), 'Just do it' (Nike), or 'Have it your way' (Burger King)? Was the Government warning about a coming disaster when it registered the mark 'EndTime Ministries'?" Framed this way, the Court (in both the majority and concurrence) makes clear that the Trademark Office approving a registration endorses the registrant's right to source identity in the marketplace and nothing more.
In a concurring opinion joined by half of the Court, Justice Kennedy "explains in greater detail why the First Amendment’s protections against viewpoint discrimination apply to the trademark here" and further contends "that the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties." Kennedy notes "[i]t is telling that the Court’s precedents have recognized just one narrow situation in which viewpoint discrimination is permissible: where the government itself is speaking or recruiting others to communicate a message on its behalf" or, as a subset of this doctrine, "situations where private speakers are selected for a government program to assist the government in advancing a particular message" -- neither of which apply to the issues presented by § 1052(a).
Finally, a one-page concurrence from the ever-cantankerous Justice Thomas notes his personal belief that all attempts by the government to restrict truthful speech warrant strict (rather than intermediate) scrutiny, regardless of whether or not the speech is commercial. While a moot issue for the purposes of the case, since § 1052(a) did not even survive intermediate scrutiny, this is clearly an evergreen point of contention for the Justice.
By invalidating § 1052(a)'s disparagement clause under the First Amendment, the Supreme Court has opened up a wider range of trademarks to be submitted to and accepted by the Trademark Office. While social mores may ultimately curb the use of arguably disparaging marks in the marketplace, Tam has helped ensure that the federal government will no longer play a part in that decision-making process.