The Authors' Take - Disparaging or offensive trademark registrations in the United States

Disparaging or offensive trademark registrations in the United States 

Are there any limits after the US Supreme Court's decision in Matal v Tam?

by L Donald Prutzman

Tannenbaum Helpern Syracuse & Hirschtritt LLP

The United States Supreme Court’s decision in Matal v. Tam erased the country’s seventy-year-old policy, codified in § 2(a) of the Lanham Act, baring the registration of any trademark that “[c]onsists of or comprises . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  In a case challenging the Patent & Trademark Office’s refusal to register the mark THE SLANTS for a musical group composed of Asian-Americans, the Court held that the prohibition on registration of disparaging trademarks could no longer be enforced because it is in conflict with the right of free speech that the First Amendment to the United States Constitution guarantees.  The decision also effectively settled a more prominent controversy in litigation for over 25 years over whether trademark registrations for the Washington Redskins football team should be cancelled as disparaging to Native Americans.

Most notably, the Court rejected the government’s contention that a trademark registration is “government speech,” to which the First Amendment does not apply, rather than private speech that the First Amendment protects.  The Court decisively rejected the “government speech” argument because trademarks are chosen by the applicants, not the government, and often express a viewpoint—indeed merely by giving offence an offensive or disparaging trademark is expressing a viewpoint.  The decision reinforced the First Amendment’s robust free speech guarantee of even unpopular, odious expression, noting that “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

The Tam decision also calls into question whether the Lanham Act’s statutory provision barring registration of “immoral” or “scandalous” trademarks is an unconstitutional restraint on free speech.  Tam has unleashed a torrent of trademark applications not only for a variety of marks using offensive racial and ethnic slurs, but also for marks consisting of or including four-letter words not traditionally used in polite company.  Whether the scandalousness restriction will survive First Amendment scrutiny is currently before the courts in another case, In re Brunetti, wending its way to possible future Supreme Court review.  The government is arguing that Tam is distinguishable and so the restriction can survive.  

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]