Supreme Court Rules That Government Cannot Ban Offensive Trademarks

In a greatly-anticipated decision (particularly by the Washington Redskins), the Supreme Court ruled today that the U.S. government cannot refuse federal registration of an offensive trademark, holding that such a restriction violates the First Amendment.  The decision was a significant victory for not only Simon Tam (respondent in the case) and his band, The Slants, but also for the Washington Redskins, which has been involved in a lengthy legal battle over the REDSKINS federal trademark registrations.

In Matal v. Tam, a unanimous Supreme Court struck down the “disparagement clause” of the Lanham Act, Section 2(a), which prohibited federal registration of trademarks that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  The case involved the rock band The Slants, which was denied a federal trademark registration for the band name on the grounds that the name disparaged “persons of Asian descent” and thus violated the disparagement clause.  The band challenged the constitutionality of the disparagement prohibition, arguing that it violated their First Amendment rights. The Supreme Court agreed, stating that the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”   Matal v. Tam, No. 15-1293 (June 19, 2017).

The disparagement clause has been recognized since its codification in the original Lanham Act in 1946 – and courts have long held that the provision does not violate the First Amendment because the restriction is limited to the federal registrability of the mark and did not bar use of a trademark in commerce or prevent enforcement of common law trademark rights. The Supreme Court disagreed with this longstanding precedent in holding that the restriction on registration of “disparaging” marks does violate First Amendment rights.

This ruling will have significant consequences for brand owners, particularly the Washington Redskins.  In 2014, the U.S. Patent and Trademark Office held that several REDSKINS trademarks disparaged Native Americans and cancelled the trademark registrations at issue in the dispute.  The Redskins challenged the decision on the grounds that the disparagement clause of the Lanham Act was unconstitutional, raising the same arguments as those asserted by The Slants.  The Redskins case is currently on appeal before the United States Court of Appeals for the Fourth Circuit and has been stayed pending the Supreme Court’s decision in Matal v. Tam. As a result of the ruling in favor of Tam, the Redskins have inched closer to the end zone and are likely to see a decision in its favor soon and is hoping to finally put the legal battle as to the registrability of the REDSKINS trademark to rest.