The Lanham Act and Disparaging Trademarks
The Lanham Act is a broad piece of federal legislation that regulates trademark registrations. Reduced to its basic functions regarding registration, the Lanham Act basically dictates that the United States Patent and Trademark Office (USPTO) must approve trademarks for registration if they don’t cause confusion with other trademarks and are distinctive enough to be associated with one single brand, among other nuanced technical requirements.
In a peculiar and outlying section of the Lanham Act, the disparagement clause prohibited the United States Patent and Trademark Office (USPTO) from registering applicants’ trademarks that may “disparage . . . or bring . . . into contempt or disrepute” any “persons, living or dead.” 15 U.S.C. § 1052(a).
Matal v. Tam Overview
Due to this restriction by the disparagement clause, Simon Tam, lead singer of the band The Slants, was refused registration of the THE SLANTS becuase it is a derogatory term used to describe Asians, despite the fact Mr. Tam and his bandmates are Asian-Americans and their intention was to “reclaim” the name and drain its derogatory meaning. Mr. Tam appealed this refusal, which was eventually heard by the Supreme Court of the United States in Matal v. Tam, No. 15-1293 (2017), which held in a unanimous opinion that the disparagement clause violates the First Amendment’s Free Speech Clause as speech may not be banned on the ground that it expresses ideas that offend. The USPTO therefore must grant Mr. Tam’s registration if The Slants satisfies the additional requirements of the Lanham Act.
The Court’s Reasoning
In ruling in favor of Mr. Tam, the Court, through Justice Alito, outlined the powers and limitations of the First Amendment.
The First Amendment prohibits the government from “abridging the freedom of speech,” but it does not limit or regulate the government’s ability to speak. The First Amendment does not require the government to be viewpoint neutral whenever it speaks through its actors. Such a limitation would hinder the government from legislating or operating because it could never take a stance on any issue, but it cannot limit a private citizen from taking a stance on an issue.
In its arguments defending the disparagement clause, the government argued that trademark registrations are government speech and therefore can be regulated. Under the government’s reasoning, it can decide what trademarks it approves for registration because this is the government speaking, even though its approval process adheres to a specific viewpoint. Essentially, the government is speaking by saying “yes” or “no” to a trademark, instead of the citizen speaking through its trademark and the government restricting that speech by preventing registration.
The Court flatly rejected this argument.
The Court reasoned that if private speech could be passed off as government speech by simply affixing a seal of approval, government could silence or muffle the expression of disfavored viewpoints. The Court emphasized the obvious point that the government is not the one composing these trademarks – they are the creation of private citizens. If approving these marks was government speech, the government would be contradicting itself every time it approved marks for brands that were direct competitors.
The court emphatically concluded “Trademarks are private, not government, speech,” and thus cannot be restricted by being denied registration based on their viewpoint.
The government also argued that trademark registrations are akin to government subsidies and because the government is not required to subsidize activities it does not wish to promote, it does not have to approve for registration trademarks it does not wish to promote.
The Court quickly distinguished subsidies from registrations as subsidies are the government paying money to parties and the USPTO does not pay money to registrants, it bills them for a fee.
Finally the government argued the Court should uphold the disparagement clause under a new doctrine applied to “government-program” cases, which the court flat out rejected under similar reasoning explained above.
The elimination of the disparagement clause by the Court allows a whole new sector of marks to be considered for federal registration. Since the enactment of the Lanham Act, thousands of marks have been refused registration under the disparagement clause. One such example was the attempt for a media group to register the mark “HEEB,” a derogatory term for Jewish people. Similar to The Slants, Heeb Media sought to use the mark HEEB to “reclaim” the name and drain its derogatory meaning towards Jews; however, just like its rejection of THE SLANTS, the USPTO rejected HEEB and the Trademark Trial and Appeal Board upheld this rejection in In re Heeb Media, LLC, No. 78558043 (TTAB Nov. 26, 2008). Due to the efforts of Mr. Tam and the holding of the Supreme Court, Heeb Media and other entities seeking registration of “disparaging” marks can now seek registration without having to overcome the disparagement clause.
The Court’s decision also prevents groups from petitioning to cancel a trademark registration on grounds that the group finds the registered trademark to be disparaging. Not too long ago, such a cancellation action caught national attention when a group successfully petitioned to cancel the Washington Redskin’s trademark registration for the name REDSKINS on grounds the mark was disparaging to Native Americans. Now that the disparagement clause is no more, groups cannot petition for cancellation of these marks and the Redskins’ trademark registration will be reinstated.
Although “disparaging” marks may now be granted registration given they satisfy the other requirements of the Lanham Act, this is in no way an endorsement of these marks by the government and in no way will result in a proliferation of “disparaging” trademarks in the marketplace. One does not need its trademark registered to utilize it and so many “disparaging marks” are being used by companies today. One quite evident example is the Redskins’ continued use of their trademark despite the cancellation of their registration. And trademarks will only be registered if they are a source identifier for a product or service, such as a brand or product name, and will only remain registered if continuously used in commerce. If the mark is truly offensive to the consuming public, market forces and the court of public opinion will prevent the proliferation of the product and thus the product name.
Some groups are undoubtedly alarmed by the Tam decision, but the result will not be a world inundated with “disparaging” marks. Market forces will prevent this and now Mr. Tam and like-minded entities such as Heeb Media can take further steps to reclaim terms derogatory to their identities.