Even Disparaging Trademarks are Registerable

Intellectual Property Alert | June.20.2017

The Supreme Court recently ruled 8-0 that the U.S. Patent and Trademark Office (“USPTO”) can no longer refuse to register trademarks because it deems them “disparaging” pursuant to a section of the federal trademark statute.  (Newly appointed Justice Gorsuch did not take part in the opinion.) See Matal v. Tam, 582 U.S. ___ (2017).  In addition to providing interesting commentary on the intersection of First Amendment and trademark law, this decision opens the door for new and continued registration of offensive marks, including the REDSKINS mark that has been involved in a widely-followed legal saga.    

At issue in the case is the registration of the mark THE SLANTS for a rock band formed by Asian-Americans, in part to reclaim the ownership of the term.  The USPTO refused to register the mark based on a statute that prohibits registration of marks that “disparage” persons, institutions, beliefs or national symbols.  See 15 U.S.C. § 1052(a).  An en banc Federal Circuit reversed that decision in a 9-3 ruling, finding that the so-called “disparagement clause” violates the First Amendment, as discussed in a separate article.

The Supreme Court affirmed the Federal Circuit’s ruling in a decision that included separate writings by three justices.  Although the decision is a complex navigation through First Amendment law, the bottom line is clear—the disparagement clause “offends a bedrock First Amendment principle:  Speech may not be banned on the ground that it expresses ideas that offend.” 

The Court unanimously found the disparagement clause unconstitutional, but the justices were somewhat divided on the reasoning.  Beyond the core holding, Justice Alito, writing for four justices, expressed the opinion that a trademark registration is not a government subsidy and that the disparagement clause would be unconstitutional even if trademarks were commercial speech.  Justice Kennedy, also writing for four justices, concurred with a further discussion of why viewpoint discrimination dooms the disparagement clause.  He wrote that the clause “reflects the Government’s disapproval of a subset of messages it finds offensive.  This is the essence of viewpoint discrimination.”  He went on to write that “[t]he central purpose of trademark registration is to facilitate source identification … Whether a mark is disparaging bears no plausible relation to that goal.”  Justice Thomas separately reiterated his prior view that limitations even on commercial speech should receive strict scrutiny.

The decision has clear implications for the REDSKINS dispute, which was put on hold in November 2016 pending the Supreme Court’s ruling in Tam.  The USPTO cancelled the REDSKINS mark based on the same disparagement clause, a basis that is no longer valid in the wake of Tam.  What is less clear is the continued vitality of another portion of 15 U.S.C. § 1052(a) that precedes the disparagement clause and requires the USPTO to make similar viewpoint determinations—it prohibits registration of “immoral, deceptive, or scandalous matter.”  It is likely this section will be tested soon as well, assuming the USPTO continues to apply it in the wake of the Supreme Court’s ruling in Tam.