By John Nading, David Kramer, James Stewart, and Alberto Zacapa

The Supreme Court today struck down the disparagement clause of the Lanham Act as facially invalid under the Free Speech Clause of the First Amendment, affirming the decision of the Court of Appeals of the Federal Circuit.  This outcome in Matal v. Tam is a victory for the Asian American rock band The Slants.  The band had chosen this name “in order to ‘reclaim’ and ‘take ownership’  of stereotypes about people of Asian ethnicity.”

The U.S. Patent & Trademark Office (PTO) and subsequently the U.S. Trademark Trial and Appeal Board (TTAB) had denied registration for the trademark THE SLANTS on the grounds that it was allegedly disparaging.  The PTO and TTAB had relied on Section 2(a) of the Lanham Act, a provision otherwise known as the “disparagement clause,” which prohibits the registration of a trademark “which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  This provision, which had prevented countless applicants from securing registration for controversial marks, had been a contentious issue for years.  Justice Alito, the author of today’s opinion, unequivocally wrote that the Court now “hold[s] that this provision violates the Free Speech Clause of the First Amendment.”  In an apparent rebuke of the PTO’s longstanding practice, the Court stated that the provision “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Thus, the Court found that implementation of the provision constitutes viewpoint discrimination.

Today’s outcome is also undoubtedly welcomed news for pro-football team the Washington Redskins.  The team’s trademark litigation gained significant media coverage after the TTAB voted to cancel six of the team’s trademark registrations, concluding that the term “redskins” is disparaging to a substantial number of Native Americans. The Redskins took the case to federal court, and while a subsequent appeal was pending, filed an unusual petition asking the Supreme Court to hear the case before the Fourth Circuit had rendered a decision.  The Supreme Court denied the team’s petition to join The Slants case.  Today’s decision will most likely be a turning point in the Redskins’ fight to keep their trademark registrations.

Time will tell what the practical effects of this decision will be on new trademark applications, including for marks considered to be immoral or scandalous, and whether there will be a flood of filings for marks that would formerly have been considered “disparaging.” As the Court said, “[s]peech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’” The Court went on to remark that the disparagement clause “is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”