The Lanham Act: Disparagement Provision Violates the First Amendment

Introduction

On June 19, 2017, the Supreme Court made a decision in Matal v. Tam (previously known as Lee v. Tam). The case addressed the issue of whether or not the Lanham Act’s disparagement clause impeded on trademark applicants’ First Amendment rights.

Background

The case’s history can be traced back to front-man Simon Tam’s application to register his band name The Slants, filed in 2011. As his application progressed through the registration process, it was rejected by the examining attorney, who cited the Lanham Act’s prohibition of trademarks that “may ‘disparage...or bring...into contemp[t] or disrepute’ any ‘persons, living or dead’” U.S.C. §1052(a). However, Tam claimed that his intentions were not to disparage, but to reclaim the term and express pride in his Asian heritage. In response to the denial of his application, Tam appealed before the Federal Circuit, whose final decision recognized the disparagement provision of the Lanham Act as unconstitutional. For this reason, the Federal Circuit expressed that Tam should be granted his trademark registration for The Slants. However, the Patents and Trademark Office still did not agree that Tam should be granted his mark, and the case was then appealed and presented before the Supreme Court.

The Decision

On January 18, 2017, oral arguments were heard before the Supreme Court, and a decision was made on June 19, 2017. The Supreme Court unanimously affirmed the Federal Circuit’s decision that the Lanham Act’s disparagement provision is unconstitutional, violating the applicant’s right to free speech. This decision was made upon the arguments of viewpoint-based discrimination and commercial vs. expressive purpose of a mark. Although perceived as offensive to some, prohibiting such marks silences a viewpoint, and with trademarks being considered private speech rather than government speech, the silencing of these viewpoints is considered a violation of the First Amendment. Furthermore, because the Government and its programs are obliged to adhere to viewpoint neutrality, commercial speech (i.e. trademarks) is no exception, regardless of the speech’s expressive aspect. The disparagement provision automatically muffles a viewpoint albeit disfavored, and therefore, all trademarks—even those perceived to be offensive—are at the very least entitled to a chance of becoming registered.

Conclusion

This Supreme Court decision redefined the Lanham Act and its boundaries. The disparagement provision can no longer be used as a basis for rejection of a U.S. trademark application due to its violation of the First Amendment. It excludes the government from deciding what is considered moral and immoral, leveling the field for trademark applications and granting applicants the chance to protect their names.

Full decision can be read here: Matal, Interim Director, United States Patent and Trademark Office v. Tam