On June 19, 2017, the Supreme Court passed down the decision in Matal v. Tam, one that will permit the trademark registration of offensive words, such as racial slurs and epithets. In order to understand this decision and its consequences, it’s first necessary to discuss trademark law.
Trademark Law
In the United States, trademarks are governed by a law called the Lanham Act. One provision of the Act, 15 U.S.C. 1052 (a), contains the disparagement clause. This clause prohibits the registration of trademarks that consisted of matter “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt, or disrepute.”
Facts of Case
Simon Tam, the lead guitarist of The Slants, an Asian-American rock group, tried to register the band name as a trademark. However, his application was denied because according to the examining attorney “a substantial composite of persons… find the term in the applied-for mark offensive.”
Tam took his case to federal court and ultimately the case was heard by the Supreme Court. In his legal brief, Tam argued that the disparagement clause prohibited the registration of marks that disparage “persons.” Tam claimed that the term “persons” only applied to natural and juristic persons, not non-juristic entities like racial and ethnic groups.
Supreme Court Holding
The Supreme Court held the following:
- The disparagement clause does apply to marks that disparage the members of a racial or ethnic group, not just individuals.
- The disparagement clause is unconstitutional because it violates the First Amendment’s Free Speech Clause, which prohibits the government from “abridging the freedom of speech.” Trademarks are private speech, not government speech, because the government does not dream up the trademarks that are registered.
Additionally, below is an interesting statement from the opinion about the disparagement clause:
The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause.
Impact of Decision
So, what are the consequences of this decision? Two immediate effects are that 1) the disparagement clause is no longer valid law and 2) The Slants will be able to register their mark. The ultimate effect? Terms, no matter how offensive, will be able to be registered. Look at the NFL Washington Redskins. They were prevented from registering their mark because the term redskin disparages Native Americans. However, because of this decision, they will be able to do so.
You can find a link to the Supreme Court’s decision here. For more information about trademark law, read these blog posts about the Kardashian/Blac Chyna trademark battle and trademark licensing or contact us here.
