Client Alert

Supreme Court Holds THE SLANTS Can Be Registered as a Trademark: Disparagement Clause Violates the First Amendment

19 Jun 2017

The Supreme Court today brought closure to Simon Tam’s seven-year legal journey seeking to obtain a federal trademark registration for his band name, THE SLANTS. The Court held in Matal v. Tam that the Lanham Act’s ban on disparaging trademarks violates the Free Speech Clause of the First Amendment.

Mr. Tam is the founder of the Asian-American dance-rock band The Slants. Mr. Tam first applied to register the mark THE SLANTS in 2010. The United States Patent and Trademark Office (PTO) refused his registration on the basis that the examining attorney found it to be disparaging to people of Asian descent.

Section 2(a) of the Lanham Act states: a mark may be refused registration if it “[c]onsists of or comprises . . . matter which may disparage . . . persons . . . or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a). Whether a mark is disparaging is determined by a two-part test: (1) what the likely meaning is of the matter in question, considering both dictionary definitions and the manner in which the mark is used in the market; and (2) if the meaning is found to refer to identifiable persons, whether the meaning may be disparaging to a “substantial composite of the referenced group.”

The Court stated that “Slants” is a derogatory term for persons of Asian descent. The members of Mr. Tam’s band are Asian American. Mr. Tam and his band, however, believe that by taking the term as the name of their band, they will help to “reclaim” the term and “drain its denigrating force.”

Mr. Tam appealed the refusal to register THE SLANTS as a trademark. The Supreme Court granted review on the issue of whether the non-disparagement clause in Section 2(a) of the Lanham Act violates the First Amendment because it bans speech on the grounds that it expresses ideas that cause offense.

The Court rejected the government’s three arguments that the heightened scrutiny standard of the First Amendment does not apply.

First, the Court rejected the government’s argument that trademarks are government speech. The Court stated that it is “far-fetched” to suggest that the content of a registered trademark is government speech and that, if it were, “the Federal Government is babbling prodigiously and incoherently.” The Court reasoned that there is no evidence that the public associates the contents of trademarks, unlike license plates, with the government. Furthermore, a finding that trademark registrations are government speech could implicate copyright registrations, potentially eliminating First Amendment protection for registered copyrighted works. The Court reasoned that copyrights could not be distinguished on the basis of being expressive, as the government argued, because trademarks too often have expressive content, as with THE SLANTS trademark.

Second, the Court rejected the government’s argument that trademark registration is a government subsidy in which the government can express a particular viewpoint. The PTO does not pay those seeking registration. Rather, applicants pay the government for application and maintenance fees.

Third, the Court rejected the government’s proposed new “government-program” scenario, reasoning that it was merely a merger of the previous two doctrines. Ultimately, the Court reasoned that the disparagement clause “cannot be saved” by analyzing it as any type of government program in which content- or speaker-based restrictions are permitted.

The Court did not decide whether trademark registration is commercial speech, because it found that the disparagement clause failed both the lower scrutiny standard for commercial speech and the heightened scrutiny standard for non-commercial speech. The government’s interests boiled down to preventing speech expressing ideas that offend, but the Court found that the disparagement clause is not narrowly tailored to meet this goal. The Court said, “[I]t is not an anti-discrimination clause; it is a happy talk clause.”

The Court also did not decide how the First Amendment affects other proscriptions in Section 2(a) of the Lanham Act—namely, the prohibition against registering marks that are immoral or scandalous, but not necessarily disparaging to a particular group. Are all scandalous trademarks viewpoint-neutral, or does a refusal to register such marks implicate First Amendment rights? We can expect to see applicants claiming violations of their First Amendment rights when arguing against refusals of such marks in the future.

If you have any questions regarding trademark registration, please contact one of the members of our Trademark Group.

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