In Matal v. Tam, the United States Supreme Court struck a provision of the Lanham Act that has been used to deny federal registration of trademarks deemed disparaging to “persons, . . . institutions, beliefs, or national symbols.” In a unanimous* opinion issued on June 19, 2017, the Court held that the Act’s disparagement clause, in force since 1946, violates the Free Speech Clause of the First Amendment to the Constitution.

The Supreme Court’s opinion marks a triumph more than seven years in the making for The Slants, an all Asian-American dance rock band, and the band’s lead singer, Simon Tam. In 2010, Tam applied to the United States Patent & Trademark Office (the USPTO) to register THE SLANTS as a trademark. A USPTO trademark examiner rejected his application.

Tam persisted, however, and his case made its way through the Trademark Trial and Appeal Board, the United States Court of Appeals for the Federal Circuit, and the Supreme Court. Ultimately, Tam’s dispute with the government generated the filing of more than 30 amicus briefs, by groups ranging from the Washington Redskins to the San Francisco Dykes on Bikes Women’s Motorcycle Contingent.

Tam Seeks to ‘Reclaim’ an Ethnic Slur

Tam chose the name “The Slants” to “reclaim” and “take ownership” of stereotypes about Asian ethnicity. As the Supreme Court’s opinion explained, the band “draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes.”

During a recent visit to Bradley’s Nashville office for a Nashville Bar Association event, Tam recalled an incident in grade school in which he attempted to scare away a bully by striking a karate pose, even though he did not practice karate. Tam’s bluff succeeded, and he walked away unharmed. From this episode, Tam said he learned that by embracing an offensive stereotype, he could diminish its potency and thus its ability to disparage his ethnicity. He described this as “social justice achieved through linguistic change.”

The USPTO did not see it that way.

USPTO’s Refusal to Register THE SLANTS

The USPTO denied Tam’s application to register THE SLANTS on the ground that it disparaged Asian-Americans. The Lanham Act, at 15 U.S.C. § 1052(a), prohibits federal registration of marks that “disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” To fall within this statute, a mark must meet two requirements: Its “likely meaning” must refer to “identifiable persons, institutions, beliefs or national symbols,” and it must be “disparaging to a substantial composite of the referenced group.”

This highly subjective test has resulted in an inconsistent application of the disparagement clause. For example, the USPTO refused to register HAVE YOU HEARD SATAN IS A REPUBLICAN as disparaging, but did not find that THE DEVIL IS A DEMOCRAT was disparaging. Likewise, the USPTO allowed registration of the words, DYKES ON BIKES, but refused registration of that same organization’s logo.

To support its conclusion that THE SLANTS was disparaging, the USPTO relied on sources such as an entry from urbandictionary.com and a photograph of Miley Cyrus distorting her eyes to make them appear slanted. The USPTO rejected Tam’s argument that the band’s name was intended as “a positive term of self-reference that promotes cultural pride and recognition” and rejected submissions from Asian-American organizations declaring that they did not view THE SLANTS as disparaging.

After several unsuccessful attempts to persuade the USPTO to reconsider its decision, Tam appealed to the Federal Circuit. On December 22, 2015, the Federal Circuit ruled in his favor, holding that the disparagement clause violated the Free Speech Clause of the First Amendment. The majority in the Federal Circuit found that the disparagement clause engages in viewpoint-based discrimination. The majority also rejected the government’s arguments that registered marks constitute government speech (which is not covered by the Free Speech Clause).

The USPTO appealed the Federal Circuit’s decision to the Supreme Court.

Supreme Court Strikes Disparagement Clause

The Supreme Court affirmed the Federal Circuit’s judgment and ruled unanimously that the disparagement clause is unconstitutional. The justices held that the First Amendment prohibits the USPTO from interfering with Tam’s speech, even if the speech is disparaging. Writing for the Court, Justice Alito concluded that the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The question of whether THE SLANTS is, in fact, disparaging to Asian-Americans was never reached. Justice Kennedy, in a concurring opinion, observed that “thoughtful persons can agree or disagree” with Tam’s argument that registration of THE SLANTS will have the effect of “reclaiming an offensive term for the positive purpose of celebrating all that Asian-Americans can and do contribute to our diverse Nation.” The existence of these opposite viewpoints reinforces the conclusion that the USPTO cannot discriminate against one of the viewpoints by denying Tam’s trademark registration, Justice Kennedy concluded.

The Court also unequivocally rejected the notion that federal registration of trademarks constitutes government speech – which would have eliminated the trademarks’ First Amendment protection. If trademark registration were characterized as government speech, the Court reasoned, other systems of government registration, such as copyright registration, “could easily be characterized in the same way.”

The Court’s opinion paves the way for Tam to register THE SLANTS. The opinion is also likely to prove critical to the Washington Redskins in pending litigation over the USPTO’s cancellation of six of its trademark registrations in 2014 based on the disparagement clause. A federal court in Virginia affirmed these cancellations, Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015), and the Redskins’ appeal of that decision to the United States Court of Appeals for the 4th Circuit has been held in abeyance pending the Supreme Court’s ruling in Tam.

How Will Expressive Marks Be Treated?

The Supreme Court’s invalidation of the Lanham Act’s disparagement clause provides some long-awaited clarity. But the Court’s opinion leaves unanswered questions about the degree of protection that should be afforded to expressive marks.

The Court noted, but did not resolve, a dispute between the parties about whether trademarks are subject to a lower level of protection because they are commercial speech. The government argued that “the central purposes of trademarks are commercial,” and federal law regulates them “to promote fair and orderly interstate commerce.” Tam, on the other hand, argued that trademarks do more than fulfill a commercial purpose because, in addition to identifying the source of products or services, they also have an expressive component. THE SLANTS, for example, identifies Tam’s band but also expresses a view about social issues.

The Court acknowledged trademarks’ expressive component, noting, “Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words.” The Court concluded, however, that it did not have to resolve this dispute between the parties because the disparagement clause is unconstitutional even under the lower standard of protection afforded to commercial speech.

*Justice Gorsuch did not participate in the consideration of this case. All eight remaining justices decided that the disparagement clause violated the First Amendment, with Justice Kennedy (joined by three other justices) and Justice Thomas writing concurring opinions explaining their reasoning for finding the disparagement clause unconstitutional.