The Supreme Court Slants Toward Tam: Disparagement Clause Ruled Unconstitutional

Yesterday, in a unanimous decision, the Supreme Court struck down the ban on registering disparaging trademarks under 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), deeming the statute facially unconstitutional under the First Amendment.

The United States Patent and Trademark Office (“the USPTO”) refused to register the mark THE SLANTS for use in connection with “entertainment in the nature of live performances by a musical band” on the ground that the mark was disparaging to Asian Americans. The Slants chose their name to pay homage to their Asian heritage and to “take back” what was once viewed as a racial slur (and is still viewed as such by many in the Asian community). The USPTO cited Section 2(a) of the Lanham Act, which prohibits registration of trademarks that may “disparage…or bring…into contemp[t] or disrepute” any “persons living or dead.” 15 U.S.C. § 1052(a). The USPTO uses a two-part test to determine whether a mark is disparaging. The first part of the test involves determining the “likely meaning” of the mark at issue. If that meaning refers to “identifiable persons, institutions, beliefs or national symbols,” then the second part of the test is to determine whether the mark is “disparaging to a substantial composite of the referenced group.” Tam found it puzzling that the USPTO determined the mark THE SLANTS to be disparaging to Asian-Americans, particularly since the band is comprised of Asian-Americans. Tam appealed the ruling to the Federal Circuit. The en banc Federal Circuit ruled that the disparagement provision violated the First Amendment, and the Supreme Court agreed.

Though the ruling was unanimous, the judges had differing reasons for finding the disparagement clause unconstitutional. All justices collectively rejected the argument that federally registered trademarks are government speech and therefore immune from First Amendment scrutiny of any kind. Half of the participating justices reasoned that the disparagement clause could not withstand even the relaxed judicial scrutiny that the Supreme Court applies to commercial speech. The other half of the participating justices struck down the disparagement clause on the basis that the government may not punish or suppress speech based on its disapproval of the views conveyed.

This ruling will certainly have an impact on how the First Amendment is applied in other trademark cases, particularly in Pro-Football, Inc. v. Blackhorse, which is currently pending before the Fourth Circuit. Pro-Football has appealed a district court decision affirming the TTAB’s decision to cancel Pro-Football’s registrations for various marks that include the term “Redskins” on the ground that “Redskins” violates the anti-disparagement clause of the Lanham Act. The Supreme Court’s ruling makes Pro-Football’s argument before the Fourth Circuit no longer look like a Hail Mary.