Government May Not Deny Registration to “Disparaging” Trademarks

June 2017

In Matal v. Tam, No. 15-1293 (U.S. June 19, 2017), the U.S. Supreme Court unanimously ruled that the U.S. government cannot withhold the benefits of trademark registration based on the offensiveness of the image or words the applicant wishes to register. 

The controversy arose out of the rejected trademark application from an Asian-American dance rock band, The Slants. The artists claim that they wish to reclaim the term “slants,” which has been used as a derogatory reference to people of Asian descent, and transform it into a “badge of pride.” The group applied to register the band name, and the U.S. Patent and Trademark Office (PTO) denied the application based on a federal provision barring the registration of disparaging trademarks. After the application was denied, the band's front man and founder, Simon Shiao Tam, appealed to the U.S. Court of Appeals for the Federal Circuit in Washington. Tam argued that the disparagement provision unconstitutionally discriminated against some trademark owners based on the viewpoint they expressed. The Court of Appeals agreed, and the government appealed.

The government defended the provision, arguing that it should not be required to approve trademarks “containing crude references to women based on parts of their anatomy, the most repellent racial slurs and white-supremacist slogans; and demeaning illustrations of the prophet Muhammed and other religious figures.” The government argued that the restriction was justified because trademarks constitute government speech, which may be restricted in ways that private speech may not. The government also contended that federal trademark registration is a benefit that confers additional protection, but not an entitlement that must be afforded to all applicants.

Writing for the Court, Justice Samuel Alito did not hold back in his assessment of the disparagement provision. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” The Court also noted that the government undermined its argument that trademarks were government speech by registering other disparaging trademarks, as well as trademarks on opposing sides of political issues. “If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently.”

Some have argued the decision would have a direct impact on another high-profile case involving the National Football League’s Washington Redskins. In 2014 the PTO cancelled its trademarks at the request of Native American activists on the grounds that the name disparaged Native Americans. The team appealed the PTO’s decision, but that appeal was put on hold in the 4th Circuit pending the outcome of The Slants’ case.

The authors thank Jessica Quintero for her contributions to this article.