Client Alerts / 06.20.2017

Supreme Court Rules Refusal to Register Disparaging Trademark Violates First Amendment

By Alex E. Jones

Under the Lanham Act, the United States Patent and Trademark Office (“USPTO”) has traditionally denied trademark applications for trademarks which “may disparage… persons… institutions, beliefs, or national symbols….” (U.S.C. § 1052). This is commonly referred to as the “disparagement clause.” On June 19, 2017, the Supreme Court declared the disparagement clause as unconstitutional in violation of the First Amendment’s Free Speech Clause.

The case, Matal v. Tam, was brought by the Asian-American rock band The Slants, after the USPTO refused the band’s registration for the trademark “THE SLANTS.” The USPTO deemed the mark as disparaging to Asians.

The Slants contested the denial of the registration through the administrative process, but ultimately failed. They then appealed to federal court, where an en banc Federal Circuit found the USPTO’s denial violated the First Amendment. The Supreme Court affirmed.

Writing for the Court, Justice Alito held that the disparagement clause “offends a bedrock First Amendment Principle: Speech may not be banned on the ground that it expresses ideas that offend.” Justice Alito went on to state that “trademarks are private, not government, speech,” and thus, the government cannot regulate trademarks in a way that violates individuals’ First Amendment rights.

The Court’s decision is certain to impact more than just The Slants. This decision opens the door for trademark registrations that have been denied pursuant to the disparagement clause. Most notably, the Washington Redskins are likely to reclaim their trademark, which the USPTO canceled in 2014, as it was deemed offensive to Native Americans.

For additional questions or guidance on registering and protecting your trademarks, please contact KJK’s Intellectual Property Group.