In Matal V. Tam, Scotus Rules Prohibition On Disparaging Trademarks Unconstitutional

by CMCP - California Minority Counsel Program

CMCP - California Minority Counsel Program

[author: Raffi Zerounian - Partner at Hanson Bridgett LLP]

The Asian American members of the band the Slants adopted that name to “reclaim” and “take ownership” of the derogatory term. The United States Patent and Trademark Office (“USPTO”) refused to register a trademark application for THE SLANTS filed by Simon Shiao Tam, the band’s lead singer, because the mark violated the Lanham Act’s disparagement clause. Tam appealed and finally prevailed before the Supreme Court of the United States in Matal v. Tam, 582 U.S. ___ (2017), which was announced on June 19, 2017. In pushing to secure a trademark registration for “The Slants,” however, Tam opened the flood gates for hate speech in trademark registrations issued by the USPTO.

Trademarks are indicators of source—including words, names, symbols, logos, smells, or sounds—that are capable of distinguishing a person’s goods or services from those of others. The main federal trademark statute is the Lanham Act, which was enacted in 1946 and amended several times since then. The Lanham Act, in addition to prohibiting trademark infringement, trademark dilution, and false advertisement, also governs registration of trademarks with the USPTO. Under the Lanham Act, trademarks that have been used in U.S. commerce are eligible for registration on the USPTO’s federal register. Trademarks that consist of descriptive terms may be placed on the USPTO’s supplemental register.

Common law trademark rights are created through use of a mark in U.S. commerce, and federal registration is not necessary to enforce common law trademark rights in federal court or use the ™ symbol. Nevertheless, owning a federal trademark registration on the USPTO’s principal register does provide significant benefits, including that the registration: serves as constructive notice of the registrant’s claim of ownership in a mark; “is ‘prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate’” (citing B & B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, at __ (2015) (slip op., at 3) (quoting §1057(b)); may become “incontestable” upon the fifth anniversary of the registration of the trademark; and enables the registrant to stop the importation into the United States of goods bearing an infringing mark. Also, the registered trademark symbol ® cannot be used without a federal registration (although owners of unregistered marks can use the ™ symbol).

The Lanham Act prohibits the registration of certain categories of trademarks. Notably, for seventy years, the “disparagement clause” of the Lanham Act has barred the registration of a trademark “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” 15 U.S.C. §1052(a). The policy of the USPTO had been to refuse registration of trademark applications that contained matter that was “found to refer to identifiable persons, institutions, beliefs or national symbols” that had a “meaning that may be disparaging to a substantial composite of the referenced group” taking into context “contemporary attitudes.” Trademark Manual of Examining Procedure §1203.03(b)(i) (Apr. 2017). After the USPTO examining attorney assigned to an application had found that a prima facie case of disparagement existed, trademark applicants were given an opportunity to present argument as to why the applied for mark was not disparaging. Nevertheless, the trademark manual was clear that “[t] he fact that an applicant may be a member of that group [being disparaged] or has good intentions underlying it use of the term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.” Id.

Approximately seven years ago, Tam filed a trademark application for THE SLANTS for “Entertainment, namely, live performances by a musical band.” That application was refused registration by the USPTO examining attorney assigned to the trademark application because the derogatory term in the mark violated the disparagement clause contained in Section 2(a) of the Lanham Act. See 15 U.S.C. §1052(a). Tam appealed to the USPTO’s Trademark Trial and Appeal Board, which affirmed the examining attorney’s decision. Tam appealed, and an en banc panel of the Court of Appeals for the Federal Circuit ultimately ruled that the disparagement clause violated the First Amendment. The Supreme Court of the United States unanimously affirmed the Federal Circuit’s decision. Justice Alito announced the judgment of the Court, and delivered the opinion with respect to Parts I, II, and III-A, in which all justices joined (except Justice Thomas did not join in Part II, and Justice Gorsuch took no part in the decision).

The Supreme Court ruled that the content of trademarks registered by the USPTO does not constitute government speech. The Court reasoned that the Federal Government has no role in developing or editing the content of trademarks in trademark applications, and the examining attorneys assigned to review trademark applications do not inquire whether a trademark is consistent with any government policy. The Court explained that if registered trademarks constitute government speech, then “the Federal Government is babbling prodigiously and incoherently.” The Court distinguished case law finding specialty license plates to be government speech by noting that the States have used license plates to convey messages, license plates operate as a form of government identification, license plates are “closely identified in the public mind” with the government, and the States often maintain direct control over the content of license plates.

The Court also rejected the Government’s reliance on cases upholding the constitutionality of government programs that subsidized speech expressing a particular viewpoint. The Court held that these cases were distinguishable because they involved government payments or benefits, and concluded that trademark registration does not provide analogous benefits. Rather, registering trademarks is akin to the benefits that everyone receives, like police and fire protection.

The Court declined to rule on whether trademarks are commercial speech subject to relaxed scrutiny under Central Hudson Gas. & Elect. v. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980), which held that any restriction of speech must serve a “substantial interest” that is “narrowly drawn.” Rather, the Court ruled that the Lanham Act’s disparagement clause fails the Central Hudson standard because it is not “‘narrowly drawn’ to drive out trademarks that support invidious discrimination.” The Court found that the disparagement clause “is a happy-talk clause,” since it would on its face apply to trademarks such as “’Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’” Accordingly, the Court held that the Lanham Act’s disparagement clause violates the First Amendment’s Free Speech Clause.

Under Tam, trademark applications that contain terms that disparage racial or ethnic groups will no longer be refused registration under the Lanham Act’s disparagement clause, regardless of the intent of the applicant. In other words, trademarks containing hate speech, including racial epithets, are now eligible to receive federal trademark registrations issued by the USPTO. The greatest beneficiary of the Court’s decision in Tam may not be the Slants but rather the owners of sports teams that have derogatory team names like the Washington Redskins. That football team, which has been in a decades-long legal battle regarding whether its team name is disparaging to Native Americans, is almost certain to prevail in those proceedings given the Supreme Court’s announcement that the Lanham Act’s disparagement clause is unconstitutional.


Written by:

CMCP - California Minority Counsel Program

CMCP - California Minority Counsel Program on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.