Matal v. Tam, the trademark case, that asks whether a disparaging trademark can be federally registered. The Court explained that the disparagement clause violates the free speech clause of the First Amendment of the U.S. Constitution. The Lanham Act, the statute that sets forth U.S. trademark laws, has certain provisions that explain under what circumstances a trademark cannot be federally registered. For example, if a trademark is merely descriptive, or if a trademark is deceptively misdescriptive, the trademark may not be federally registered. At issue in Tam was the provision that prevents disparaging trademarks from being federally registered.
The petitioner, Tam, wished to register the trademark THE SLANTS for association with is rock band. The United States Patent and Trademark Office refused the registration, but the Federal Circuit ruled that the disparagement provisions , what the Supreme Court referred to as the disparagement clause – violates the First Amendment to the United States Constitution.
The Disparagement Clause
The Supreme Court first determined that the disparagement clause applies to trademarks that disparage the members of a racial or ethnic group, which meant that it was indeed necessary to determine whether the clause violates the Free Speech Clause of the First Amendment. The government raised three specific arguments:
(1) That trademarks are government speech, not private speech,
(2) That trademarks are a form of government subsidy, and
(3) That the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine.
Matter of Seal to decide
Under the government speech doctrine the government does not itself need to maintain content neutrality when it embarks upon a policy or program. Justice Alito, writing for the Court, explained that it would be an extraordinary extension of the government speech doctrine to hold that “a trademark converts the mark into government speech.” As Justice Alito explained: “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.”
The Supreme Court had little difficulty dismissing the government’s rather ridiculous argument that a trademark is a government subsidy. For example, Justice Alito pointed out that payments are made to the government from applicants for a trademark.
The Supreme Court explained
With respect to the final government argument, the Supreme Court pointed out that they have over and over again explained that viewpoints cannot be prohibited because they are offensive. The Court then explained that the government argument for this new category of permissible speech restriction is really just a combination of the government speech doctrine together with the subsidy argument with several union dues case theories sprinkled therein.
The Supreme Court concluded on this creative third government argument: “The disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.” Finally, the Supreme Court rejected the theory that disparaging trademarks can be prohibited under the commercial speech doctrine, finding the clause far too broad.
A simple answer to this argument is that the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. 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. In this way, it goes much further than is necessary to serve the interest asserted.