In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to Asian-American rock band The Slants. In Matal v. Tam, No. 15-1293 (June 19, 2017), the Court held that the Lanham Act’s prohibition on registering federal trademarks that “disparage” any person violates the First Amendment.
BACKGROUND
As we blogged here, here, and here, this case began in 2011, when Simon Tam applied to the United States Patent and Trademark Office (USPTO) to register his band’s name, “The Slants,” as a trademark. The USPTO refused the application on the ground that “slants” was disparaging to a substantial composite of Asians under § 2(a) of the Lanham Act, 15 USC 1052(a).
The Trademark Trial and Appeal Board (“Board”) upheld the Examining Attorney’s decision, and Tam appealed to the PTO’s reviewing court, the Court of Appeals for the Federal Circuit. On December 22, 2015, the Federal Circuit decided, en banc, that the Lanham Act’s prohibition against the registration of disparaging marks – which was used to cancel the registration of the Washington REDSKINS, as well as bar registration of numerous other marks – was unconstitutional because it was a restriction on free speech that did not pass strict scrutiny. In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2016)
On April 20, 2016, the USPTO filed a petition for a writ of certiorari, seeking Supreme Court review of the Federal Circuit’s ruling.
SECTION 2(a) OF THE LANHAM ACT
The Lanham Act contains provisions that bar certain trademarks from the Principal Trademark Register. For example, a trademark cannot be registered if it is “merely descriptive or deceptively misdescriptive” of goods, 15 USC §1052(e)(1), or if it is so similar to an already registered trademark or trade name that it is “likely . . . to cause confusion, or to cause mistake, or to deceive,” 15 USC §1052(d).
Section 2(a), 15 USC §1052(a) prohibited the registration of a trademark “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” When deciding whether a trademark is disparaging, the USPTO applied a “two-part test.” First, it considered the likely meaning of the matter in question. If that meaning was found to refer to identifiable “persons, institutions, beliefs or national symbols,” the USPTO moved to the second step, asking “whether that meaning may be disparaging to a substantial composite of the referenced group.” The fact that a trademark applicant may be a member of that group or has good intentions underlying its use of a term did not obviate the fact that a substantial composite of the referenced group would have found the term objectionable.
THE SUPREME COURT DECISION
The issue on certiorari was whether Section 2(a) of the Lanham Act violates the Free Speech Clause of the First Amendment.
- Justice Alito wrote for a unanimous Court on point B.1 below.
- Justice Alito was joined by the Chief Justice and Justices Kennedy, Ginsburg, Breyer, Sotomayor and Kagan as to point A below.
- Justice Alito was joined by the Chief Justice and Justices Thomas and Breyer as to points B.2-4 below.
- Justice Kennedy wrote an opinion concurring in part (points A and B.1, below) and concurring in the judgment.
A. “Person” or “Persons”
Initially, the Supreme Court tackled a question Tam first raised in his Supreme Court briefs, namely, that the clause does not reach marks that disparage racial or ethnic groups, but rather only individual “persons.” Although the Supreme Court would not normally address an issue not raised below, it did in this case.
The Court reasoned that the plain terms of the disparagement clause refuted Tam’s argument. First, the statute used the plural “persons,” implying that it would be some number of persons (e.g., a “substantial composite” of a group) whose offense would be measured. Furthermore, the clause plainly referred to marks that disparage, not just “persons,” but also “institutions” and “beliefs.” It therefore applied to the members of any group whose members share particular “beliefs,” such as political, ideological, and religious groups. It applied to marks that denigrate “institutions,” and on Tam’s reading, it also reaches “juristic” persons such as corporations, unions, and other unincorporated associations. Therefore, the clause was not limited to marks that only disparage a particular natural person.
B. Free Speech
The issue on certiorari was whether Section 2(a) violated the Free Speech Clause of the First Amendment. The government advanced three arguments to protect Section 2(a): that (1) trademarks are government speech, not private speech; (2) trademarks are a form of government subsidy; and (3) the constitutionality of the disparagement clause should be tested under a hybrid “government-program” doctrine.
1. Trademarks Are Not Government Speech
The Court quickly disposed of the government’s argument that approving a trademark, either by printing in the Official Trademark Gazette or placing it on the Principal Trademark Register, makes that trademark “government speech.” “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.” Slip. Op. at 14.
The Court saw trademarks as private speech. For example, the government is not the one who creates trademarks. The government does not edit marks submitted for registration. The government does not inquire whether any viewpoint conveyed by a mark is consistent with government policy or whether any such viewpoint is consistent with that expressed by other marks already on the principal register. As the Court explained: