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Supreme Court Holds Lanham Act Disparaging Marks Provision Violates First Amendment
Practical Law Legal Update w-008-6672 (Approx. 4 pages)
Supreme Court Holds Lanham Act Disparaging Marks Provision Violates First Amendment
by Practical Law Intellectual Property & Technology
| Published on 19 Jun 2017 • USA (National/Federal) |
In Matal v. Tam, the US Supreme Court affirmed the judgment of the US Court of Appeals for the Federal Circuit, holding that the prohibition against registration of disparaging marks in Section 2(a) of the Lanham Act violates the Free Speech Clause of the First Amendment.
On June 19, 2017, in Matal v. Tam, the US Supreme Court affirmed the judgment of the US Court of Appeals for the Federal Circuit, holding that the Lanham Act's prohibition against registration of disparaging marks in Section 2(a) violates the Free Speech Clause of the First Amendment ( (June 19, 2017)).
This case arose from a 2010 application that Simon Shiao Tam filed with the USPTO to register the mark THE SLANTS for use with live performance by a musical band. The trademark examiner refused registration—which was subsequently affirmed by the Trademark Trial and Appeal Board (TTAB)—finding that the mark consisted of matter that may disparage, bring into contempt, or disrepute persons, institutions, beliefs, or national symbols (15 U.S.C. § 1052(a)). For more on the TTAB decision, see Legal Update, TTAB Affirms Section 2(a) Refusal to Register Derogatory Term.
On appeal, the Federal Circuit, sitting en banc, vacated the TTAB's decision that the mark is unregistrable, concluding that Section 2(a)'s disparagement clause was unconstitutional because it violated the Free Speech Clause of the First Amendment. For more on the Federal Circuit decision, see Legal Update, Lanham Act Provision Prohibiting Federal Trademark Registration for Disparaging Marks is Unconstitutional: Federal Circuit.
The Supreme Court granted certiorari and affirmed the Federal Circuit's decision.
As a threshold matter, the Supreme Court held that the plain terms, and breadth, of the disparagement clause demonstrate that it applies to marks that disparage members of a racial or ethnic group, and is not limited to marks that disparage a particular natural person.
The Supreme Court next considered and rejected all of the government's arguments in concluding that the clause violates the Free Speech Clause of the First Amendment.
Specifically, the Supreme Court disagreed with the government's argument that trademarks are government speech, not private speech. The Supreme Court concluded that trademarks are private speech to which the Free Speech Clause applies, because:
- Even though the USPTO, an arm of the federal government, registers trademarks:
- the USPTO does not create or edit marks submitted for registration;
- if the mark meets the Lanham Act's requirements, registration is mandatory; and
- a trademark examiner's decision is not reviewed by any higher official unless the registration is challenged.
- None of the Supreme Court's government speech cases support the idea that registered trademarks are government speech.
- Trademarks have not traditionally been used to convey a government message and, other than the Lanham Act's disparagement clause, the viewpoint expressed by a mark does not play a role in the registration decision.
- There is no evidence that the public associates the contents of trademarks with the federal government.
The Supreme Court also determined that the cases the government cited were not instructive, because the cases:
- In which the Supreme Court upheld the constitutionality of government programs that subsidized speech expressing a particular viewpoint involved the government paying cash subsidies or comparable subsidies such as tax benefits. Trademarks, however, are not a form of government subsidy because the USPTO does not pay parties seeking registration of marks. Instead, the applicant must pay the USPTO.
- Purporting to create a new doctrine applying to "government programs" involve a public employer's collection of union dues from its employees, which is significantly different than trademark registration.
After disposing of the government's arguments, the Supreme Court addressed whether trademarks are commercial speech and subject to the relaxed scrutiny standard outlined in Central Hudson Gas & Electric Corp. v. Public Service Commission of N.Y., 447 U.S. 557 (1980). The Supreme Court determined that it was unnecessary to resolve this issue since the disparagement clause cannot withstand the review required under Central Hudson. This review requires the clause to serve a substantial interest and be narrowly drawn.
The Supreme Court concluded that the disparagement clause goes too far in serving the government's interests in:
- Preventing speech that expresses ideas that offend.
- Protecting the free flow of commerce.
This is because:
- The clause is not an anti-discrimination clause, but a "happy-talk" clause.
- The clause protects every person, living or dead, and every institution.
- The line between commercial and non-commercial speech is not always clear, and free speech would be endangered if commercial speech permits the suppression of any speech that may be offensive.
Justice Alito delivered the court's opinion.
Justice Kennedy, joined by Justices Ginsburg, Sotomayor, and Kagan, concurred in part and concurred in the judgment, and wrote separately to explain in further detail why the First Amendment's protections apply, noting that:
- Aside from a few narrow exceptions, it is a fundamental principle of the First Amendment that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys.
- A law found to discriminate based on viewpoint is presumptively unconstitutional.
- Viewpoint-based discrimination necessarily invokes heightened scrutiny.
Justice Thomas concurred in part and wrote separately to emphasize that when the government seeks to restrict truthful speech to suppress the ideas it conveys, strict scrutiny is appropriate whether or not the speech in question may be characterized as commercial.
Justice Gorsuch did not take part in the consideration or decision of this case.