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Asian Rock Band v. the PTO: The Supreme Court, the First Amendment, and What the Justices Decided in Matal v. Tam

Trademark Law Alert

Opening

On June 19, 2017, the U.S. Supreme Court in Matal v. Tam, 582 U.S._ (2017), held that the disparagement clause of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment of the Constitution on the grounds that it is not content neutral and is therefore viewpoint discriminatory.

Background

In November 2011, the lead singer of an Asian rock band (hereinafter, “Tam”) applied to register with the U.S. Patent and Trademark Office (“PTO”) his band’s name, “The Slants,” in connection with “entertainment in the nature of live performances by a musical band.”   582 U.S._, slip op. at 1 (2017). The PTO refused registration on the grounds that the mark might be disparaging to persons of Asian descent under Section 2(a) of the Lanham Act, 15 U.S.C.A. § 1052(a) (the “Act”).  Id.  The Act in relevant part provides that “no trademark shall be refused registration … unless it (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter; or 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 …”

Despite Tam’s professed desire to “reclaim the stereotype [of Asians having slanted eyes] and take ownership of the term,” the Trademark and Trial Appeal Board (the “TTAB”) affirmed the Examiner’s refusal. Id. at 6-7. On appeal, Tam challenged the constitutionality of the disparagement clause, alleging that the provision “condition[ed] a benefit--trademark registration--on the relinquishment of speech.” The Federal Circuit Court of Appeals ultimately sided with Tam, holding:

  • The PTO’s refusal to register “The Slants” under the Act constituted viewpoint discrimination;
  • Trademark registrations are private speech, not government speech or government subsidy exempted from constitutional strict scrutiny; and
  • The disparagement provision did not serve the purpose of preventing deception or consumer confusion--the hallmark of the Act. 

808 F.3d 1321 (Fed. Cir. 2015). 

The Supreme Court affirmed,  582 U.S._, slip op. at 1 (2017), rejecting all of the arguments made by the Federal Government for upholding the constitutionality of the Act: that is, (a) trademark registration is not government speech exempted from First Amendment scrutiny; (b) trademark registrations are not government subsidies exempt from First Amendment scrutiny; and (c) trademark registrations are not a government program providing a limited forum for private speech permitting some limitations on the speaker.

The Court concluded that trademarks are private speech, not government speech. Id. at 18. While the First Amendment exempts government speech from First Amendment scrutiny, trademark registrations are outside this exemption, because the Federal Government “does not dream up these marks, and it does not edit marks submitted for registration.” Id. at 14. Thus, the Court noted that “if federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently … saying many unseemly things [, and] … unashamedly endorsing a vast array of commercial products and services.” Id. at 14-15.

The Court also found that trademark registrations are not a government subsidy, because the PTO does not pay monies or cash equivalents to applicants seeking to register marks. To the contrary, the PTO charges filing fees to register and maintain registrations for marks. Id. at 19.  

The Court also determined that the disparagement clause does not constitute a government program providing a limited public forum for private speech, with permissible content- or speaker-based restrictions, but rather “discriminates on the bases of ‘viewpoint’” by denying federal registration to viewpoints deemed offensive by certain groups. Id. at 22.

Having rejected the government’s arguments in favor of constitutionality, the Court held that the disparagement clause of the Act failed constitutional muster even under the relaxed scrutiny of Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980), because the provision is “not 'narrowly drawn' to drive out trademarks that support invidious discrimination.”  Id. at 25. Justices Kennedy and Thomas both concurred in part, and concurred in the judgment, positing that the disparagement clause be reviewed under higher levels of scrutiny than considered by the Court’s majority.

What Happens Now?

In footnote 5 of the slip opinion, the Court noted that the guidelines for determining whether a mark is “scandalous or disparaging are somewhat vague” and “highly subjective.” This begs the question of whether the PTO will be able to deny trademark registrations going forward under either the scandalous or disparagement provisions of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). 

The Court’s decision in Matal v. Tam will likely have a profound impact on matters that are currently on appeal wherein the PTO refused or cancelled trademark registrations for violating the disparagement clause, most notably, the Washington Redskins’ case,  Blackhorse v. Pro-Football, Inc., 112 F. Supp. 3d 439 (E.D. Va. 2015).  The Washington Redskins’ registered marks were similarly challenged by different groups of Native Americans, both in 1992 (under Harjo v. Pro-Football, Inc., 1994 TTAB LEXIS 9, *1 (T.T.A.B. Mar. 24, 1994)), and in 2006, because the term “redskin(s)” was found to be disparaging to Native Americans. Given the Court’s holding, many otherwise offending marks, whether based upon political, religious or other beliefs or sensibilities of the American public, will likely be allowed to register with the PTO going forward – as the PTO cannot deny the registration of any mark that meets the Lanham Act’s other viewpoint-neutral requirements.

Jonathan Hudis is a partner in the Intellectual Property Practice Group of Quarles & Brady LLP, in its Washington, D.C. office. For questions, please contact him at [email protected]/(202) 372-9528. The author gratefully acknowledges the assistance of Tiffany Li, a Summer Associate with the Firm.