The U.S. Supreme Court has reminded us again that the First Amendment’s protection of free speech includes speech that might hurt your feelings. In a unanimous decision after a two year litigation battle, the Court just held that the provision in the Lanham Act (the Federal trademark registration statute) that barred registration for marks that are “disparaging” is a violation of the First Amendment’s protection of free speech.
This case, Matal v. Tam, was brought by the band “The Slants” (whose members are of Asian descent) after it was denied a Federal trademark registration on the basis that its mark was disparaging to people of Asian descent.
While the specific case involved the band’s efforts to secure a Federal trademark registration for “THE SLANTS,” this case was most closely watched because of a separate case presenting the same issue which was brought by the National Football League’s Washington Redskins. The Redskins alleged a similar violation of its constitutional rights of free speech after the United States Patent and Trademark Office cancelled the US Registrations for various “REDSKINS” marks pursuant to that same PTO rule. The Supreme Court’s ruling in the Matal v. Tam case effectively will end a longstanding effort by Native American activists to cancel the team’s registrations in order to pressure the team to change the name.
Under US trademark law, trademark rights (called “common law rights”) are acquired and maintained through use of a mark in connection with a given good or service in the geographical area of use. Those rights are not dependent on having a Federal registration. However, having that registration affords significant benefits, including the right to preclude others from adopting and using the same or a confusingly similar mark anywhere else in the United States. Arguably, the Washington Redskins, due to its extensive nationwide use of the “REDSKINS” marks, already has common law rights that extend everywhere in the US. Still, this decision will make it easier for the team to pursue infringement remedies and, more important, sets a new precedent for how the PTO must examine and evaluate these types of controversial marks.
The Lanham Act’s Section 2(a), which provides that marks which are “disparaging” may not be registered, has been law since the Lanham Act’s enactment in 1946. When previously challenged on constitutional grounds, the courts had long ruled that it didn’t violate the First Amendment because it doesn’t actually bar use of the offending mark, only its Federal registration, nor does it prevent the owner from enforcing common law trademark rights.
The Court disagreed. Justice Samuel Alito, writing for the Court, stated that the disparagement clause amounted to discrimination based on unpopular speech: “We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”
Lawyers for the PTO had argued, among other things, that the “disparaging marks” registration prohibition amounted to “government speech.” The Supreme Court has ruled in the past that “government speech” is not subject to First Amendment scrutiny. For example, the court recently ruled that it was permissible for the State of Texas to refuse to issue Confederate flag license plates.
The Court was not persuaded by that argument and called it “far-fetched.”
While the Court made it clear that offensive marks are free speech, the consuming public also is free to respond with its own free speech, by refusing to support companies or organizations whose marks are offensive to them. Thus, while The Slants and the Washington Redskins may have won the legal battle here (and I agree with the decision on First Amendment grounds), consumer and other legitimate market pressures to drop those names (and other similar marks such as the Cleveland Indian’s use of its “Chief Wahoo” logo) may force the owners of those marks to rethink their use.
