In a landmark trademark law ruling, the Supreme Court of the United States held in Matal v. Tam that the Lanham Act’s disparagement clause is facially unconstitutional under the First Amendment’s Free Speech Clause. This case will have significant implications for other case, such as the series of cases addressing the registrability of the mark REDSKINS for an NFL football team. At issue in Matal v. Tam was application of 15 U. S. C. §1052(a) to Simon Tam’s application for registration of the mark THE SLANTS for “entertainment in the nature of live performances by a musical band.” Section 1052(a), also known as the disparagement clause, provides in relevant part that a trademark may not be registered if it:
“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. . .”
Simon Tam formed an Asian-American dance-rock band The Slants. The band’s name was allegedly chosen as a way to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. However, when Tam filed an application with the United States Patent and Trademark Office to register THE SLANTS as a trademark, registration was refused on the alleged basis that the mark is disparaging. According to the examining trademark attorney, THE SLANTS is disparaging because the “likely meaning of “THE SLANTS” [is] a negative term regarding the shape of the eyes of certain persons of Asian descent.”
Tam argued in response that “[f]undamentally, Applicant’s response is that in contrast to all disparagement-based refusals to register cited by the Examining Attorney, the applied-for mark “THE SLANTS” has meanings other than the disparaging meaning that is the Examining Attorney deemed “likely,” the word “slant” being a common English word.”
In the end, the examining trademark attorney, obviously, did not agree. This case has a lengthy history, but there were several back-and-forth exchanges between the examining attorney and Tam’s counsel. After a final refusal was issued by the examining attorney, Tam appealed to the U.S. Trademark Trial and Appeal Board (TTAB). But the TTAB affirmed the examining attorney, and the TTAB decision was also appealed to the U.S. Court of Appeals for the Federal Circuit. However, in a surprising turn of events, an en banc Federal Circuit found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.
On further appeal, the U.S. Supreme Court ruled 8-0 in favor of Tam’s right to register his mark THE SLANTS. Arguments in support of the disparagement clause suggested that it “encourage[es] racial tolerance and protect[s] the privacy and welfare of individuals.” Judge Alito responded that:
“But no matter how the point is phrased, its unmistakable thrust is this: The Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”
The holding in Matal v. Tam will have a significant impact on trademark prosecution practice before the USPTO. As noted above, it will also have a significant impact on the series of cases seeking to invalidate trademark registrations for the REDSKINS mark held by the well-known NFL professional football team. In view of the Supreme Court decision, one would expect that the REDSKINS NFL football team should prevail in preserving its registrations for the REDSKINS trademark.