First Amendment Protects Disparaging Trademarks

On June 19, 2017, the United States Supreme Court ruled in an 8-0 decision (Justice Neil Gorsuch not participating) that the disparagement clause of the Lanham Act, 15 U.S.C. § 1052(a), violates the First Amendment’s free speech clause.

The case, Matal v. Tam, involved an Asian-American dance-rock band called The Slants that sought to register its name as a trademark. The U.S. Patent & Trademark Office rejected the band’s application, relying on the disparagement clause of the 1946 Lanham Act, which prohibits registration of “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The band, which sports album names such as The Yellow Album and Slanted Eyes, Slanted Hearts, had its application rejected because “there is . . . a substantial composite of persons who find the term [Slants] offensive.”

In holding the disparagement clause unconstitutional, the Supreme Court declared that the clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” The Court also recognized that “[t]rademarks are private, not government speech,” meaning they receive the full protection of the First Amendment. Ruling on First Amendment grounds allowed the Court to avoid the question of whether trademarks are commercial speech, but the Court made clear that to the extent trademarks are commercial speech, this case shows that such speech is not always a clear exception to First Amendment protection.

Fans of The Slants are not the only ones celebrating this decision. Reacting to the highest court’s ruling, Daniel Snyder, the owner of the Washington Redskins football team, said in a statement, “I am THRILLED. Hail to the Redskins.” This decision is auspicious for the Redskins organization, which has for years been immersed in litigation with Native Americans over whether the term “Redskins” should be a registered trademark. While the Trademark Trial and Appeal Board (TTAB) revoked several of the Redskins’ trademark protections in 2014, and a U.S. district court affirmed the TTAB’s ruling the next year, the Redskins organization is now poised to reclaim these protections in its pending appeal to the U.S. Court of Appeals for the Fourth Circuit.

As for this decision’s impact on trademark law more generally, the Supreme Court appears to be ushering in a new era of First Amendment protection for what some may view as disparaging trademarks. Will we see a deluge of trademark filings involving what some may see as offensive marks? Time will tell.

For more information about this decision or other trademark matters, contact the Intellectual Property Team at the Law Firm of Conway, Olejniczak & Jerry, S.C.

Written By:
Law Firm of Conway, Olejniczak & Jerry, S.C.