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Posted on Monday, June 26, 2017

Offensive Trademarks are Protected by Freedom of Speech

All eight of the Supreme Court Justices who heard the case of Matal v. Tam have ruled that the “disparagement clause” of the federal Lanham Act, which states that derogatory phrases cannot be trademarked, is unconstitutional. The United States Patent and Trademark Office (PTO) cited this clause in denying a federal registration to Simon Tam, the lead singer of “The Slants,” who applied to trademark his band’s name. The United States Court of Appeals for the Federal Circuit reversed the PTO’s decision, finding that the disparagement clause represented an unconstitutional abridgement of free speech. Justice Alito delivered the Supreme Court’s opinion in the case, which affirmed the Federal Circuit’s decision and held that the disparagement clause violated the Constitution by allowing for impermissible viewpoint discrimination by the government.

Essentially, the Supreme Court was concerned that the clause permitted government censorship of given viewpoints – specifically, “those that disparage or bring into contempt or disrepute any persons, living or dead,” to paraphrase the language of the statute itself. Such censorship power, the Court found, is impermissible under the First Amendment, since, as Justice Alito wrote, “the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought that we hate.”

The Court commented on the reality that “The commercial market is well stocked with merchandise that disparages,” and noted that it is actually in the public interest to allow for disparagement of certain groups; Justice Alito pointed out that, as written, the disparagement clause would not only bar registration of potentially offensive marks like “The Slants,” but also socially progressive marks like “‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’” As such, Justice Alito continued, the disparagement clause is “not an anti-discrimination clause; it is a happy-talk clause,” and therefore neither in the public interest nor constitutionally sound. “For these reasons,” the Court concluded, “we hold that the disparagement clause violates the Free Speech Clause of the First Amendment.”

This ruling comes as good news for Dan Snyder, owner of the Washington Redskins. Like the Slants, the Redskins also had a number of their trademarks impacted by application of the disparagement clause. The team is now on track to have its cancelled marks reinstated. In an e-mail he sent just after the ruling, Mr. Snyder wrote: “I am THRILLED. Hail to the Redskins!”

It’s true that the term “Redskins” may be as offensive to Native Americans as “The Slants” may be to Asian Americans, but application of the First Amendment means that offensiveness won’t function to keep these marks from being eligible for federal registration. It will be up to the market itself to determine whether goods and services sold under potentially offensive marks will thrive or be shunned by the buying public. Like the producers of edgy art, film, and comedy, business owners will have to be smart in deciding how far is too far with respect to the trademarks they choose.

Brooke Blaney, a law clerk at Berenzweig Leonard, assisted Associate Attorney Ryen Rasmus in writing this blog.