How much control should the government have over commercial speech? That’s precisely the question we’re answering today by looking at a significant U.S. Supreme Court case from 2017. In this case, known as Matal v. Tam, Supreme Court Justices made a unanimous decision that the Disparagement Clause violates the Free Speech Clause of the First Amendment. Here’s the background of this case and information on how the Justices reached their decision.


Simon Tam wanted to register a trademark of his band name, The Slants, with the U.S. Trademark Office. The term “slants” is often seen as derogatory toward those of Asian descent. Regardless, Tam sought to defuse the word by using it as a band name. Yet, the Patent and Trademark Office did not approve Tam’s trademark application, believing that the mark would be too disparaging.

Upon reading several definitions of slants in the dictionary that confirmed that the term contained slurs, the PTO examiner rejected the trademark registration under the disparagement clause of the Lanham Act. As a result, Tam appealed the decision in the D.C. Circuit Court of Appeals, which reversed the decision stating that it infringed on Tam’s First Amendment rights. Afterward, the government took the case to the Supreme Court to make the final say on seemingly offensive trademarks.

In 1946, Congress enacted the Lanham Act, which explains federal trademark law and how individuals and corporations can register trademarks. The Lanham Act contains a Disparagement Clause, which is supposed to protect “persons, living or dead, institutions, beliefs, or national symbols” from disparagement. However, during Matal v. Tam, both The U.S. Court of Appeals and The Supreme Court found that the Disparagement Clause violated First Amendment rights.

So, how did the U.S. Supreme Court Justices come to their conclusions? Essentially, it came down to a few facts about this case and several in the past.

First, Justice Alito explained that the government could not reject a trademark solely because the expression is offensive. Society finding something offensive is not a justification for prohibiting expression under the First Amendment. Justice Alito referenced Texas v. Johnson, a flag-burning decision, to explain that it is not within the government’s right to limit free speech.

Second, Justice Alito clarified whether federal trademarks were government speech. While the government must communicate its viewpoints without violating the First Amendment, it is not valid for private entities. Similarly, by approving a trademark, the government is not displaying a government message and instead simply registering a name or term for another entity. Therefore, trademarks are private speech and must allow for First Amendment rights.


In conclusion, Matal v. Tam answered several questions about the government’s role in trademark registration. Because denying trademarks and even copyrights could be a form of government censorship, the Justices felt it is essential to protect commercial speech and First Amendment freedom of speech rights. They are also deregulating commercial speech doctrine through their actions, which helps companies register intellectual property, regardless of whether a portion of the population finds their trademarks offensive.


Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

PATENT, Trademark and IP Law Blog

  • CIONCA IP TEAM (SE)7/7/2021 2:52:33 PM

    Offensiveness vs Free Speech in Trademark Law

Marin Cionca | Founder of CIONCA IP

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

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About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.

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