The Death of the Disparagement Clause

The Supreme Court recently held in Matal v. Tam that the First Amendment bars the United States Patent and Trademark Office (USPTO) from refusing to register trademarks deemed to be offensive or disparaging. The Court’s decision concerned a band’s attempt to trademark their name, “The Slants.” The name is an attempt by band members – all of whom are Asian-Americans – to reclaim a racial slur and drain it of its offensive meaning. The USPTO denied the application, claiming it disparaged Asian-Americans, therefore violating the disparagement clause of the Trademark Act, which prohibits the registration of any trademark “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The band appealed, and the Federal Circuit Court of Appeals held that the disparagement clause unconstitutionally limited free speech.

The Supreme Court, in a unanimous opinion, upheld the Federal Circuit’s decision, holding that the disparagement clause violates the “bedrock First Amendment principle” that “Speech may not be banned on the ground that it expresses ideas that offend.” Slip op. at 1-2.

The Government argued that registered trademarks are government speech, thus, not protected by the Free Speech Clause. The Court was not convinced, writing that “it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal government is babbling prodigiously and incoherently.” Slip op. at 14-15. In other words, “trademarks are private, not government speech.” Slip op. at 18. Therefore, because trademarks are private speech, they are protected by the Free Speech Clause and may contain disparaging sentiments. As Justice Alito wrote for the Court:

“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.’” (quoting Justice Oliver Wendell Holmes in his dissent in United States v. Schwimmer (1929))

Ultimately, the Court found that the disparagement clause constituted unconstitutional “viewpoint discrimination”:  “It is not an anti-discrimination clause; it is a happy-talk clause.” Slip op. at 25.

In addition to free speech activists, The NFL’s Washington Redskins are elated by this decision. For years, Native American groups have attempted to cancel the football team’s trademarks on the grounds that the marks are disparaging. The team’s case was stalled while the Fourth Circuit waited to hear the Supreme Court’s decision in Matal v. Tam. Now, with the Supreme Court’s clear condemnation of the disparagement clause, the Redskins should earn a win relatively quickly.

The Matal decision has reignited debate over whether the ability to offend should be protected under the Free Speech clause. While it is too early to predict the full impact of this decision, the USPTO will certainly see an influx of new, potentially offensive trademark applications.  

Photograph of The Slants at Anime Central, 2009. By Kaitou42 (Own work by uploader. Igor Bass Photography) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons

About the Authors

Arthur J. DeBaugh

Art DeBaugh focuses his practice on trademarks, marketing/advertising/promotions issues, copyrights, trade dress, trade secrets, and business and corporate matters. 
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Justin Hardy

Justin M. Hardy

Justin focuses his practice on property tax appeals, intellectual property law, tax controversy law, and general business law.  He is a regular contributor to both The North Carolina Property Tax Law Monitor and The Trademarketing Blog.  You can follow him on Twitter @JustinHardyBDP.
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