Ideas

Supreme Court Strikes Down Lanham Act Provision Barring Registration of Disparaging Trademarks as Unconstitutional

Firm Thought Leadership

Today, the Supreme Court issued its much anticipated opinion in Matal v. Tam, No. 15-1293, 582 U.S. ___ (2017). In 2011, Simon Tam sought to register the name of his band, THE SLANTS, with the United States Patent and Trademark Office; his application was denied registration based on Section 2(a) of the Lanham Act, which bars registration of trademarks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” In an 8-0 decision authored by Justice Alito, the Court affirmed an en banc panel of the Federal Circuit holding that this so-called “disparagement provision” violates the First Amendment’s Free Speech Clause.

The Supreme Court determined that Section 2(a) “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Slip Op. at 1-2. In so holding, the Court rejected the Government’s argument that trademarks are government speech not regulated by the Free Speech Clause. Id. at 18. In concluding that trademarks are private speech, the Supreme Court noted that: (1) “[t]rademarks have not traditionally been used to convey a Government message;” (2) other than the disparagement provision, “the viewpoint expressed by a mark has not played a role in the decision whether to place it on the principal register;” and (3) “there is no evidence that the public associates the contents of trademarks with the Federal Government.” Id. at 17.

Justice Alito, joined by Chief Justice Roberts, Justice Thomas, and Justice Breyer, further asserted that disparagement clause is neither governed by subsidized-speech jurisprudence nor constitutional under a “government-program” doctrine. Id. at 18-23. Furthermore, they determined that it was not necessary to decide whether trademarks constitute commercial speech for purposes of this case, as “the disparagement clause [could not] withstand even [relaxed] Central Hudson review.” Id. at 24 (“[A] restriction of [commercial] speech must serve ‘a substantial interest,’ and it must be ‘narrowly drawn.’”) (citing Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557, 564-65 (1980)).

Justice Kennedy, joined by Justice Ginsburg, Justice Sotomayor, and Justice Kagan, concurred in part and in the judgment, agreeing that the disparagement clause was tantamount to viewpoint discrimination. Id. at 1 (Kennedy, J., concurring). Justice Kennedy argued that, “the viewpoint based discrimination at issue here necessarily invokes heightened scrutiny,” id. at 5, such that it is not necessary to give “extended treatment” to other issues raised by the parties, including whether or not trademarks are commercial speech. Id. at 1.

Justice Thomas likewise concurred in part and in the judgment, noting that he believes that strict scrutiny is warranted regardless of whether the speech at issue is deemed commercial. Id. at 1 (Thomas, J., concurring).

This case has attracted considerable attention, in part because of a case pending in the Fourth Circuit pertaining to six trademark registrations held by Pro-Football, Inc. (“PFI”) that include the terms REDSKINS or REDSKINETTES; those marks were cancelled by the Trademark Office in 2014 based on the provision that the Supreme Court struck this morning.

*Jordan B. Fernandes, a Baker Botts law clerk, assisted in the preparation of this article.

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