Justice Alito’s summary opinion announced in Court Monday morning, in what has come to be known as the Slants case (Matel v. Tam, 582 U.S. ___ (June 19, 2017), was short and sweet but the trademark applications we can expect in the near future definitely will not be. The U.S. Supreme Court ruled Monday that the Federal Government’s ban on the registration of disparaging marks violates the First Amendment.  

 

The lead singer (Simon Tam) of a rock band called “The Slants” applied for federal trademark registration of the band name and, when his application was rejected, he challenged the constitutionality of the Lanham Act’s provision (15 U.S.C. §1052(a), a.k.a., “The Disparagement Clause”) barring registration for marks that “may disparage… persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.…”. The Disparagement Clause applies to marks that disparage the members of a racial or ethnic group.

 

Tam contested the denial of his application before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). When he lost, he appealed his case to an en banc Federal Circuit that found the Disparagement Clause to be unconstitutional under the First Amendment’s Free Speech Clause. The Supreme Court granted certiorari and the Government argued before the high court, in part, that a federal trademark registration constituted government speech, not private speech and, therefore, was not subject to the Free Speech Clause. The Supreme Court disagreed, stating that “[t]he Federal Government does not dream up these marks, and it does not edit marks submitted for registration.” Moreover, the Court’s majority opinion stated, “if the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”  

 

All eight participating justices agreed on the key finding that the Disparagement Clause constitutes “viewpoint discrimination,” a decision that has not only Tam, but also the Washington Redskins organization, ecstatic. The Redskins had six federal registrations revoked in 2014 under the same clause. After losing their fight before the TTAB on a 2-1 decision (with the dissenting opinion by former DW colleague and current Administrative Judge Marc Bergsman), the Redskins current appeal before the U.S. Court of Appeals for the Fourth Circuit has been stayed pending the Supreme Court’s ruling in this case. The decision should now bring a conclusion to that quarter-of-a-century long dispute… and an in-flux of applications for derogatory marks.