The Supreme Court Holds the Lanham Act’s Disparagement Clause Unconstitutional


In a closely watched decision, the eight participating members of the Supreme Court unanimously held that the so-called disparagement clause of the Lanham Act violates the First Amendment.

The high-profile case of Matan v. Tam was brought by the frontman of an Asian-American rock band who was denied trademark registration for the name of his band, The Slants.  Even though the band claimed to have chosen its mark in an effort to reclaim and reform the derogatory term, the USPTO deemed it disparaging to individuals of Asian descent and therefore prohibited from registration under 15 U.S.C. § 1052(a).  After losing administrative appeals before the examining attorney and TTAB, Tam filed suit in federal court where the en banc Federal Circuit found this provision of the Lanham Act facially unconstitutional under the Free Speech Clause of the First Amendment.

The Supreme Court affirmed the judgment through a lengthy opinion by Justice Alito and several concurrences, holding the disparagement clause “offends a bedrock First Amendment principle:  Speech may not be banned on the ground that it expresses ideas that offend.”  In doing so, the high court rejected all of the USPTO’s reasons for denying registration, including its claim that the content of a trademark registration amounts to government speech that lessens the standard for First Amendment scrutiny.  If true, Justice Alito reasoned that the government would be “babbling prodigiously and incoherently” considering other trademark registrations that express contrary views on global warming or advise Americans to “Just Do It” (Nike) or “Have It Your Way” (Burger King).

While recognizing the disparagement clause was intended to prevent underrepresented groups from being demeaned in commercial advertising, Justice Alito wrote:  “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.”  In a concurring opinion, Justice Kennedy went so far as to reason that permitting this sort of viewpoint discrimination would sanction government censorship.

The Court’s decision has far-reaching implications, as it all but ensures the Washington Redskins will also win the fight to retain federal registration of its valuable trademarks that the USPTO cancelled in 2014.

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