Free Speech Overpowers Trademark Disparagement Clause, Says SCOTUS

The Slants case finally reached a conclusion when the U.S. Supreme Court ruled that the Lanham Act’s § 2(a) (15 U.S.C. § 1052(a)), which barred trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead,” violates the Free Speech Clause of the First Amendment.

As previously reported in this blog, The Slants are a Portland, Oregon band comprised of Asian-Americans who, in addition to creating music, are “actively involved with helping marginalized communities, leading discussions on race and identity, and raising awareness of social justice issues.” Their trademark registration application was denied by the USPTO based on §2(a), also known as the “disparagement clause”. The group’s name is a racial epithet, but they chose it as a way to neutralize the slur’s negative connotation.

The Supreme Court’s decision affirmed the Federal Circuit’s ruling that struck down the disparagement clause as impermissible viewpoint-based discrimination. The Court, in an opinion by Justice Alito, rejected all of the government’s arguments.

Trademarks Are Not Government Speech

The government argued that trademarks are government speech and therefore the First Amendment does not apply to them. The government reasoned that the USPTO’s registration of a trademark gives the mark a government “seal of approval” and is thus a manifestation of government speech. The Court dispensed with this argument by explaining that the USPTO does not create or edit marks, and only rejects marks based on an apparent viewpoint when applying §2(a). The Court held that “trademarks are private, not government, speech,” and said:

If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents…“[i]f the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.

Trademark Registrations Are Not Government Subsidies

The Court easily dispensed with the argument that trademark registrations are a form of government subsidy exempt from First Amendment scrutiny. First, Justice Alito noted that payments are made to the government from applicants for a trademark, and second, he cited evidence that the fees received from applicants for trademark registrations have fully supported the registration system for the past 27 years.

Trademark Registrations Are Not a Government Program

The Court rejected the government’s novel argument that trademark registrations are a government program providing a limited forum for private speech and therefore, some limitations on the speaker/applicant are permitted. The Court fell back on the core of free speech principles, pointing out they have repeatedly explained in their First Amendment jurisprudence that "the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers." The Court concluded that “the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.”

Implications for Trademarks Going Forward

The case will surely have implications for other trademark registration disputes currently in the courts, particularly the Washington Redskins’ case, which is based on the disparagement clause as well. Challenges to refusals based on §2(a)’s other bars for “scandalous” and “immoral” marks will almost surely rise to the forefront in light of Court’s full-throated use of the First Amendment in the Matal v. Tam case.

Photo by Wikiwopbop at English Wikipedia (transferred from en.wikipedia) and used under CC BY-SA 2.5-2.0-1.0 or CC-BY-SA-3.0, via Wikimedia Commons.

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