In a recent clash between the First Amendment and the Lanham Act, which governs US trademark law, the Supreme Court has ruled in favor of free speech. On June 19, the court affirmed the decision the Federal Circuit that a trademark can be registered for a name even if the name offends certain individuals or groups.
The case, Matal v. Tam, began when an Asian-American tried to trademark his band name as “The Slants” – a term which is derogatory to Asian-Americans. Tam has said that his intention was to “reclaim” the term and subvert its derogatory use.
Nonetheless, the U.S. Patent and Trade Office (PTO) denied his application, referring to Section 2(a) of the Lanham Act, which provides that no trademark may be registered containing “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Tam appealed the constitutionality of the Lanham Act wording to the Federal Circuit, which ruled that the disparagement clause in the Lanham Act violated the free speech principles embodied in the First Amendment.
Commercial speech is subject to relaxed constitutional analysis under the Supreme Court’s Central Hudson test.. Although the Court was not certain that the action involved “commercial speech,” the Court held that even if the Central Hudson test applied, none of the situations in which speech may be limited under Central Hudson applied in the case of Tam and his band.
The PTO also attempted to argue that granting a trademark was a form of “government speech,” implying official endorsement or imprimatur over the offensive content. The Court rejected the application.
Another issue raised by the PTO was that the patent registration system is federally funded, and thus regulations around “government subsidy” might apply. However, as the Federal Circuit had previously determined, the registration system is actually fully supported by fees from trademark holders such as Tan, who paid $275 to trademark his band name.
Ultimately, the Supreme Court found that the PTO’s decision to deny Tam’s trademark violated the principle of “viewpoint discrimination” – restricting speech to favor some viewpoints or ideas at the expense of others. As Justice Alito pointed out in his majority decision, “The name ‘The Slants’ not only identifies the band but expresses a view about social issues.”
A similar appeal involving the Washington Redskins football team is currently pending in federal court. Evoking the Lanham Act’s disparagement clause, trademark protection for the team’s name was cancelled in a lower court decision because the term Redskins is offensive to Native Americans. Now, despite the objections of members of the Navajo people, it seems likely that the Redskins decision will be reversed in light of this Supreme Court ruling in Matal v. Tam.
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The case, Matal v. Tam, began when an Asian-American tried to trademark his band name as “The Slants” – a term which is derogatory to Asian-Americans. Tam has said that his intention was to “reclaim” the term and subvert its derogatory use.
Nonetheless, the U.S. Patent and Trade Office (PTO) denied his application, referring to Section 2(a) of the Lanham Act, which provides that no trademark may be registered containing “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Tam appealed the constitutionality of the Lanham Act wording to the Federal Circuit, which ruled that the disparagement clause in the Lanham Act violated the free speech principles embodied in the First Amendment.
Commercial speech is subject to relaxed constitutional analysis under the Supreme Court’s Central Hudson test.. Although the Court was not certain that the action involved “commercial speech,” the Court held that even if the Central Hudson test applied, none of the situations in which speech may be limited under Central Hudson applied in the case of Tam and his band.
The PTO also attempted to argue that granting a trademark was a form of “government speech,” implying official endorsement or imprimatur over the offensive content. The Court rejected the application.
Another issue raised by the PTO was that the patent registration system is federally funded, and thus regulations around “government subsidy” might apply. However, as the Federal Circuit had previously determined, the registration system is actually fully supported by fees from trademark holders such as Tan, who paid $275 to trademark his band name.
Ultimately, the Supreme Court found that the PTO’s decision to deny Tam’s trademark violated the principle of “viewpoint discrimination” – restricting speech to favor some viewpoints or ideas at the expense of others. As Justice Alito pointed out in his majority decision, “The name ‘The Slants’ not only identifies the band but expresses a view about social issues.”
A similar appeal involving the Washington Redskins football team is currently pending in federal court. Evoking the Lanham Act’s disparagement clause, trademark protection for the team’s name was cancelled in a lower court decision because the term Redskins is offensive to Native Americans. Now, despite the objections of members of the Navajo people, it seems likely that the Redskins decision will be reversed in light of this Supreme Court ruling in Matal v. Tam.
Image Credit