Historically, the U.S. Patent and Trademark Office (PTO) has refused to register trademarks considered to be offensive in that they disparaged a particular person, group or institution. Now the PTO cannot deny the registration of offensive marks on the ground that they conclude the marks to be disparaging.
On June 19, the Supreme Court unanimously held (8-0) that so called the disparagement clause of the federal trademark law (Section 2(a) of the Lanham Act), is an unconstitutional violation of the First Amendment’s Free Speech Clause.
The case arose out of the name of a Portland, Oregon, rock band “The Slants.” All the members of the band, including the plaintiff and trademark applicant, Simon Tam, are of Asian decent. Mr. Tam filed a trademark application to federally register the band’s name, “The Slants.” The band chose the name to “take back” or reclaim a term historically derogatory of people of Asian descent. The PTO refused to register the mark as “derogatory or offensive” based on the dictionary meaning of ‘slants’ or ‘slant-eyes’ and also because one of the band’s performances was purportedly canceled “because of the band’s moniker.” Tam appealed the decision to the PTO’s Trademark Trial and Appeal Board (TTAB), but with no success. The next appeal, to the Court of Appeals for the Federal Circuit, was successful. The Federal Circuit, in an en banc opinion, overturned the TTAB’s decision and found that the disparagement clause is unconstitutional under the Free Speech Clause. Then, the Supreme Court granted a request for review of the case filed by the PTO.
The disparagement clause reads as “No trademark … shall be refused for registration on the principal register … unless it (a) consists of or comprises … matter which may disparage … persons, living or dead, institutions, [or] beliefs … into contempt, or disrepute.” The Court first clarified the meaning of the statute as being clear in its prohibition of registration of trademarks, which “disparage persons who share a common race or ethnicity.”
The Court then turned to the PTO’s arguments that federally registered trademarks are government speech as a form of government subsidy, and, the disparagement clause should be reviewed under the “government program” doctrine, which is outside of the protection of the First Amendment. First, the Court confirmed that the PTO’s registration of a trademark does not make a trademark government speech describing the argument as “far-fetched.” The Court further exemplified the PTO’s mischaracterization of government speech using several examples, such as “make.believe” by Sony or “JUST DO IT” by Nike. The Court noted that trademarks are “dream[ed] up” and “edit[ed]” by applicants, and therefore, “have not traditionally been used to covey a Government message.” The Court was particularly concerned that the PTO’s elimination of First Amendment protection to registered trademarks would similarly apply to copyright registration, which is inconsistent with copyright protection for free expression, and therefore, rejected the government speech argument. The Court also rejected the PTO’s position that trademark registration is a government subsidy because applicants pay filing fees and maintenance fees to the PTO for registering a trademark and “every government service requires the expenditure of government funds.” Finally, the Court denied the application of the “government program” doctrine, which provides a limited public forum for private speech based on the content or the speaker. The Court noted that in this case, the PTO exercised “viewpoint discrimination” under the disparagement clause because, although the clause prohibited disparagement of “any person, group, or institution,” it only prohibited offensive wording – a “happy-talk clause” and went “much further than is necessary to serve the interest asserted.” The Court found that the disparagement clause as “not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination.” Thus, the Court concluded the disparagement clause violates the Free Speech Clause.
In this decision, Justice Alito emphasized the importance of trademarks, which express viewpoints and ideas, no matter how short the mark. The government cannot censor such expressions based on viewpoint discrimination.
Notably, the decision is likely also a “win” for the Redskins football team, in its long-running Redskin trademark case, Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d 439 (E.D. Va 2015). In addition, the PTO will need to follow the decision in its review of forthcoming trademark applications. Importantly, this decision surely broadens the protection available for trademarks, although it may result in a somewhat less-wholesome and more shocking trademark registrations going forward.