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On June 19, 2017, Justice Samuel A. Alito, delivered the unanimous opinion of the United States Supreme Court (the “Court”) in Matal v Tam, No. 15-1293, Oct. Term, 2016, argued January 18, 2017. Simply stated, the Court upheld the decision of the Federal Circuit (In re Tam, 808 F. 3d 1321 (CA Fed. 2015) (en banc)), that Sec. 2(a) of the Lanham Act (15 U.S.C. §1052(a))(the “Act”) violates the freedom of speech clause of the First Amendment to the U.S. Constitution. The decision has wide-ranging implications for the use of names that must be sanctioned by any government agency.

In Tam, the lead singer of a dance-rock band named “The Slants”, one Simon Tam, chose the name of his group to “reclaim” the term and to attempt to prevent its use as a derogatory term for those of Asian descent. He sought federal registration of the name as a trademark in the U.S. Patent and Trademark Office (“PTO”). The PTO denied the application citing provisions of the Act prohibiting the registration of trademarks that may “disparage…or bring…into contemp[t] or disrepute” any “persons, living or dead.” The Court held that the quoted language, known as the “disparagement clause”, violates the First Amendment.

Justice Alito sets the forceful tone of the opinion when he states in the second paragraph following the announcement of the judgment of the Court:

“We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The opinion notes that trademarks have “ancient origins” and that they are not creatures of federal law. During the 19th century, they were protected by the States. Congress enacted legislation to provide a measure of national uniformity. Eventually, Congress passed the cornerstone of current federal trademark law by way of the Lanham Act (Act of July 5, 1946, ch. 540, 60 Stat. 427).

The Court remarks that even without federal registration, a “valid trademark” may still be used in commerce. Also, it may still be enforced in several ways including other provisions of the Act, other federal statutes, and under state “common law” and statutes.

Federal registration on what is known as the “principal register”, however, confers legal rights and benefits on trademark owners. Such registration provides notice of a claim of ownership and evidences, on its face, the rights of the owner in the mark. It also is a tool to attempt to stop the importation of articles into the U.S. which bear an infringing mark.

Trademarks are passed upon by PTO “examiners”. The disparagement clause, which has been in effect since the passage of the Act, necessitates a two-part test by an examiner under the Trademark Manual of Examining Procedure §1203.03(b)(i). In Tam, the examiner concluded under the two-part test that “there is…a substantial composite of persons who find the term in the applied-for mark offensive.” That conclusion was reached in part as a result of a determination that “numerous dictionaries” and persons found the term offensive. Tam failed in his appeal to the PTO’s Trademark Trial and Appeal Board, but won at the Federal Circuit Court of Appeals level which found the disparagement clause unconstitutional on its face. The United States asked the Supreme Court to review the decision.

Tam argued on appeal that the Act did not apply in this instance since class disparagement was not the disparagement of “persons”. However, as a threshold matter, and after some discussion of that point which Tam raised on appeal for the first time, the opinion states the following conclusion:

“Here, it is clear that the prohibition against registering trademarks “which may disparage . . . persons,” §1052(a), prohibits registration of terms that disparage persons who share a common race or ethnicity.”

As proof of his point, Tam argued that the PTO registered marks that were clearly offensive to classes of people. However, in a telling observation the Court notes that registration of marks that some group or class would consider offensive is “most likely [attributable to] the regrettable attitudes and sensibilities of the time in question” rather than any legal argument.

The United States contended that “(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” in its attempt to save the disparagement clause.

As to the first point the opinion cites the fact that while some government speech is beyond free-speech protection, it should not be used to silence private speech “by simply affixing a government seal of approval”, in this case the trademark registration process. Citing the potentially huge danger of such an argument, the Court found the trademark in question private, not government, speech.

As to the second point, the Court rejected the Government’s cited cases regarding the same noting that those cases all involved “cash subsidies or their equivalent.” It also rejected the argument that because government resources are expended in the registration process that such expenditure constitutes a form of subsidy. If so, the opinion states, almost every government service would constitute a subsidy to the recipient.

As to the third point raised by the Government, the Court treats it as an amalgam of the “government-speech cases and the…subsidy cases in an attempt to construct a broader doctrine that can be applied to the registration of trademarks.” Therefore, the argument that trademark registration is akin to “a type of government program in which some content- and speaker-based restrictions are permitted” must fail.

In concluding the opinion, Justice Alito states that the unmistakable thrust of the argument that the disparagement clause encourages racial tolerance and protects the privacy and welfare of individuals is that “The Government has an interest in preventing speech expressing ideas that offend.” Such an idea, he writes, “strikes at the heart of the First Amendment.” And, further, the disparagement clause goes “much further than is necessary to serve the interest asserted.”

It should be noted that another provision of the Act deals with denying PTO registration to material that is “scandalous and immoral”. The opinion does not examine that issue but it was under consideration in another Federal Circuit case of In re Brunetti (CA Fed No. 2015-1109). However, it has been reported that the PTO conceded in a filing in that case in January, 2016 that the Federal Circuit’s reasoning in Tam would invalidate that clause of the Act as well and requested a remand to the PTO’s Appeal Board. However, that filing did not completely extinguish a possible Government appeal to the Supreme Court on grounds asserted to be distinguishable from Tam.

One may rightly ask on what basis any government agency may deny protection to any juristic name (e.g. corporate name) or nickname (e.g. sports team) that may offend segments of the population. The Tam decision may have launched a new era in the protection of free speech. It gives more than lip service to the scope of the First Amendment. The tone of the opinion’s author and the fact that a unanimous opinion stood behind the decision signals the Court’s intention to protect “the heart of the First Amendment”.

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