Last year I wrote about an upcoming Supreme Court case that would have important repercussions for trademark law. The Supreme Court released their decision in that case (now named Matal v. Tam) this morning. The case centered around Simon Tam, bassist and founder of a rock band called The Slants. Tam tried to register his THE SLANTS trademark. The Trademark Office rejected his application because it considered “slants” to be a disparaging term. The Lanham Act, which governs trademark law at the federal level, bars “disparaging” marks from registration. The Supreme Court ruled that this provision was unconstitutional.
Matal v. Tam and THE SLANTS Trademark
Without getting too much into the background and history of this case (which I covered here), there are a few things you should know. Simon Tam is an Asian-American. Others called him “slant” as a racial slur when he was a kid. So he named his band The Slants to “reclaim” that name. You can imagine his surprise when his THE SLANTS trademark application was rejected on the grounds that it was disparaging. While trademark registration is not necessary to be able to use a name in commerce, it has several benefits. And Tam challenged the refusal on the basis that the disparagement provision is unconstitutional under the First Amendment.
The Supreme Court unanimously agreed with Simon Tam, and ruled that the disparagement provision is unconstitutional. The Court refuted the Government’s position that trademark registrations are “government speech” and therefore are not regulated by the Free Speech Clause.
The Federal Government does not dream up the trademarks registered by the [Patent & Trademark Office]… It is thus far-fetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.
After refusing to extend the government speech label to trademark registrations, the Court focused on the nature of the disparagement clause. They ruled that the clause constitutes viewpoint discrimination, because it singles out and refuses registration of marks because of their content.
The disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group. That is viewpoint discrimination in the sense relevant here: Giving offense is a viewpoint.
The Supreme Court has ruled the disparagement clause to be unconstitutional. So what does the aftermath of this decision look like?
Consequences of Matal v. Tam
The Trademark Office can no longer refuse trademark registration on the basis that a mark is disparaging. And it looks like this decision removed other bars to registration, as well. The decision seems to indicate that other types of “offensive” marks should now be registerable. Curse words, which were previously barred from registration, may now be allowed. I wonder if the Trademark Office’s searchable database will now be considered NSFW (not-safe-for-work)?
Simon Tam’s application for his THE SLANTS trademark is not the most famous mark affected by this ruling. The Washington Redskins will be allowed to keep their trademark registrations. You may recall that the REDSKINS trademark registration had previously been cancelled on the grounds that it is disparaging. Redskins’ owner Dan Snyder is already celebrating the Court’s decision. On the other hand, it looks like a group fighting against the Cleveland Indians logo will not be deterred by the ruling. Will disparaged groups fight alternative means to challenge trademarks like these?
Conclusion
One thing I want to emphasize is that trademark rights can be established without a registration. The media consistently gets this aspect of trademark law wrong. But trademark registration expands and enhances common law trademark rights in several important ways. Simon Tam spent years fighting to register his THE SLANTS trademark. His reasoning was somewhat atypical in that it involved important social and political issues. But there were also very important commercial considerations, as well. If you also see the importance of registering your trademark, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
