On June 19, 2017 the U.S. Supreme Court decided Matal v. Tam, holding that the Lanham Act’s prohibition on registering federal trademarks that “disparage” any person violates the First Amendment.
The Lanham Act prohibits registering trademarks that “may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a). The Patent and Trademark Office implemented this provision by denying registration if a “substantial compo[nent], although not necessarily a majority, of the referenced group would find the proposed mark ... to be disparaging in the context of contemporary attitudes.”
Simon Tam sought to register “The Slants” as a trademark for his dance-rock band, “in order to ‘reclaim’ and ‘take ownership’ of stereotypes about people of Asian ethnicity.” The PTO rejected Tam’s request based on § 1052(a), but the Federal Circuit struck down the statute as facially unconstitutional under the First Amendment.
The Supreme Court affirmed, holding that the statute “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” The Court explained that registering a trademark is not government speech for which viewpoint neutrality is not required, because “[t]he Federal Government does not dream up these marks” nor “edit” them, and “has made it clear that registration does not constitute approval of a mark.”
In a controlling plurality opinion, Justice Alito also concluded that, although “government is not required” under the First Amendment “to subsidize activities that it does not wish to promote,” registering a trademark does not fall within that rule because it does not involve “cash subsidies or their equivalent.” Nor, he concluded, does trademark registration involve the government selectively “confer[ring] a substantial non-cash benefit for the purpose of furthering activities that [it] particularly desired to promote.” He also observed that “[g]iving offense is a viewpoint,” and therefore that the statute is unconstitutional even though it “evenhandedly prohibits disparagement of all groups.”
The Court declined to decide whether trademarks are “commercial speech” for purposes of First Amendment analysis, with Justice Alito’s plurality opinion explaining that the anti-disparagement statute “cannot withstand even” the more lenient First Amendment standard applied to commercial speech. The plurality rejected the government’s asserted interest in preventing disparaging trademarks that could “have an adverse effect on commerce,” stating that “[i]f affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.” Justice Kennedy, concurring, would have held that viewpoint discrimination of this kind is not permitted even as to commercial speech.
Justice Alito delivered the opinion of the Court, in which Chief Justice Roberts and Justices Thomas and Breyer joined and in which Justices Ginsburg, Kennedy, Sotomayor, and Kagan joined in part. Justice Kennedy filed a concurring opinion, in which Justices Ginsburg, Sotomayor, and Kagan joined. Justice Thomas filed a concurring opinion. Justice Gorsuch did not participate.