Supreme Court Ruling Renders Intent Irrelevant in Disparaging Trademarks

by Law Week

In the Supreme Court decision Monday on Matal v. Tam ruling that the government may not refuse to register trademarks deemed disparaging to others, the court discussed intent in its opinion. But by declaring such refusal unconstitutional, the ruling does not leave room for the Patent and Trademark Office to examine intent when registering trademarks going forward.

In a unanimous decision, the court said Section 2(a) of the 1946 Lanham Trademark Act, which allows the denial of protection to potentially offensive trademarks, violates the First Amendment. Joe Matal is the PTO’s interim director.

The PTO refused to register the Asian American band The Slants as a trademark in 2011, saying the name would likely disparage those of Asian descent. The band’s founder, Simon Tam, claimed the office’s refusal violated his right to free speech. According to Justice Anthony Kennedy’s opinion, Tam said The Slants’ name is not intended to offend, but rather to reclaim the slur as a “badge of pride.”

“This journey has always been much bigger than our band: it’s been about the rights of all marginalized communities to determine what’s best for ourselves,” Tam wrote in a post on the band’s Facebook page following the court’s decision. “The Supreme Court has vindicated First Amendment rights not only for The Slants, but all Americans who are fighting against paternal government policies that ultimately lead to viewpoint discrimination.”

Tam lost his initial challenge of the PTO’s trademark rejection. But the case came to the Supreme Court after a majority of the U.S. Court of Appeals for the Federal Circuit ruled in 2015 that the law went against the First Amendment.

Despite the Supreme Court’s consideration of the Slants’ intent in their decision, declaring the disparagement clause of the Lanham Act unconstitutional renders intent irrelevant in the future, according to J. Michael Keyes, an intellectual property attorney at Dorsey & Whitney in Seattle. He explained the ruling makes that particular provision of the statute inoperable.

“The court’s ultimate holding and rationale is independent” of Tam’s reasoning, he said, meaning that while the court considered it important, it was not the ultimate reason for the ruling. But a key concern following the court’s decision, he said, is that the PTO now might be obligated to register all kinds of offensive trademarks. “Some suggest this could lead to a flood of trademark applications (and ultimate federal trademark registrations) containing all sorts of offensive or otherwise disparaging words, names and symbols,” Keyes said.

Justice Samuel Alito Jr. delivered the opinion for the court, stating the law in question fundamentally constitutes viewpoint discrimination.

“It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend,” Alito wrote, adding that “giving offense is a viewpoint.”

All of the other justices except Neil Gorsuch, who was not on the court when the case was argued, concurred with that part of Alito’s opinion. Justice Anthony Kennedy wrote the clause against disparaging trademarks is viewpoint discrimination because it singles out a particular type of message.

“The disparagement clause the Government now seeks to implement and enforce identifies the relevant subject as ‘persons, living or dead, institutions, beliefs, or national symbols,'” he stated. “Within that category, an applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.”

According to the court’s opinion, the PTO argued disparagement clause is viewpoint neutral because it applies equally to any trademark deemed disparaging, and because it is based on the expected reaction of the trademark applicant’s audience, rather than his or her personal views or reason for using the mark.

Kennedy addressed this by stating “a subject that is first defined by content and then regulated or censored by mandating only one sort of comment is not viewpoint neutral.” He added the disparagement clause is dangerous because it ultimately removes ideas from a larger debate.

The court’s decision will likely affect the legal battle over the controversial Washington Redskins name. The franchise’s trademark registration was revoked in 2014 using the same disparagement clause of the Lanham Act, after the PTO previously registered the trademarks in 1967, 1974, 1978 and 1990.

A district judge in Virginia refused to overturn the revocation. The case is currently in U.S. Court of Appeals for the Fourth Circuit in Richmond, and was put aside pending the Supreme Court’s decision in Matal v. Tam.

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Pleasant Grove City v. Summum (2009)
The Supreme Court determined that government speech does not need to be viewpoint neutral in a case concerning donated religious monuments displayed on public land.

The court said trademarks are not considered government speech because the PTO must register them once found to meet the Lanham Act’s viewpoint-neutral mandate and cannot remove the trademark unless one party initiates cancellation, its registration expires, or proceedings against the trademark are started by the Federal Trade Commission.

Rust v. Sullivan (1991)
The court ruled it is constitutional to restrict uses of federal funds to organizations providing abortion services.

The court opined this precedent does not apply to Matal v. Tam because the issue of monetary subsidies is different from trademark registration. It stated National Endowment for Arts v. Finley (1998) does not apply for the same reason.

Walker v. Sons of Confederate Veterans (2015)
The court ruled Texas could ban specialty license plates with images of the Confederate battle flag because the plates were government speech.

The Matal v. Tam opinion stated the “Court exercises great caution in extending its government-speech precedents, for 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.”