In one of the most anticipated trademark cases in years, the Supreme Court has ruled that prohibiting the registration of disparaging marks violates the Free Speech Clause of the First Amendment.

The issue (which we covered last year) stems from Simon Tam attempting to register a trademark for the name of his rock band The Slants. “Slants” has historically been used as a derogatory term for individuals of Asian descent, which all members of the band are. The group believed that they were reclaiming the term by using it. The United States Patent and Trademark Office (USPTO) denied the application because under the Lanham Act, marks cannot be registered if they disparage living or dead people or bring them into contempt or disrepute.

The Supreme Court affirmed the ruling of the en banc Federal Circuit, finding that the disparagement clause is facially unconstitutional under the Free Speech Clause. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend,” states Justice Alito, who wrote the opinion of the Court.

In their analysis, the Justices considered the government’s three arguments, which would either eliminate First Amendment protection or result in rational-basis review, to determine whether the disparagement clause violated the Free Speech Clause. (Rational-basis review is the least stringent judicial review of a law’s constitutionality, and all the government must show under these circumstances is that the law is rationally related to a legitimate government issue.) The arguments were: 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.

We will look at the Court’s analysis of each argument in turn.

1. Are Trademarks Government Speech or Private Speech?

The Court was concerned with the problem of private speech becoming government speech after a government seal of approval was attached because then the government could silence certain expressions after registration. “For this reason, we must exercise great caution before extending our government-speech precedents,” said the Court. The Court found that the government does not create submitted trademarks or edit them, and trademark examiners at the Patent and Trademark Office do not make a determination of whether viewpoints made by marks align with government policy. The Court stated that it was “far-fetched” to suggest that the content of registered marks is government speech, and that trademarks have not traditionally been used as government messages. “Perhaps the most worrisome implication of the Government’s argument concerns the system of copyright registration. If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation? [Emphasis added]” Thus, the court found that trademarks are not government speech.

2. Are Trademarks a Government Subsidy?
Here the government argued that this case was similar to cases where the Court upheld government programs that subsidized speech of a particular viewpoint as constitutional. The Court stated that those cases involved cash subsidies or the equivalent, which is not relevant here. It did not find cases where the government provided funds for viewpoints it wanted to promote to be instructive in this situation.
3. Should the Disparagement Clause Remain Under a New Doctrine For “Government-Program” Cases? 

The Court saw this argument as merging the government-speech cases and subsidy cases to create a broader doctrine to apply to the registration of trademarks. It didn’t find the two cases the government used as examples to be relevant. The Court thought cases “in which a unit of government creates a limited public forum for private speech” were more analogous to the present. In these situations, some content- and speaker-based restrictions were permissible, but the court still found that “viewpoint discrimination” was unconstitutional. The Court stated the disparagement clause discriminates on the basis of viewpoints. “For this reason, the disparagement clause cannot be saved by analyzing it as a type of government program in which content- and speaker-based restrictions are permitted.”

The judgment was unanimous, even though there were four total opinions. This case will likely have a favorable impact on the Washington Redskins’ attempt to reclaim its canceled trademarks, which were found to be disparaging against Native Americans by a federal judge in 2015.

For more information on trademarks, please contact The Fried Firm.