June 19, 2017. In Matal v. Tam, SCOTUS was asked to decide whether an Asian-American band name, “The Slants” was prohibited from attaining a federal trademark registration. The Lanham Act statute in question, 15 USC 1052(a), prohibits registration of trademarks which may be disparaging, bring contempt or disrepute to any persons, living or dead.
Justice Alito wrote the opinion of the court which struck down the statute in question. Numerous cases were cited by the government supporting the position that a trademark is government speech, a government subsidy, or a form of commercial speech. The eight deciding justices (J. Gorsuch not partaking ) agreed trademarks are private speech and not speech of the government. Trademark registration fees maintain the federal register. Private individuals create the trademarks, not the government. The rights associated with trademarks are through common law tradition, not purely created by the government, such as patent law.
All the Supreme Court justices agreed to not extend the boundaries of government speech past the already thin case of Walker v. Texas Divisions of Sons of Confederate Veterans, Inc. (2015) which purports a three-part test:
a. First, is the instrumentality used to convey government messages.
b. Second, how closely identified in the public mind as being with the state. Using factors such as design, manufacture, usage, ownership, and functionality.
c. Third, does the government maintain direct control over the instrumentality.
The government was unable to show any evidence to the three-part test and was unable to expand the government speech doctrine.
So, where does the case of Matal v. Tam leave trademark law? As J. Alito eloquently put it, if trademarks are a form of government speech “the Federal Government is babbling prodigiously and incoherently.” There are lots of trademarks already on the government record. Some are crossing each other, putting other products down, and lead consumers to buy products that may or may not be supported by government action.
At this point in time, there is a definite protection of trademarks by the First amendment with the striking down of the ‘Disparaging Clause’. Questions may still exist when groups try to utilize taboo symbols or words for representation regarded as “scandalous” or “immoral.” However, if an inflammatory group wants to register a symbol typically viewed as derogatory towards a whole race, class, or group of people, Matal v. Tam would seemingly protect those marks. The Trademark Office is still looking at how it will changes its rules to accommodate the decision.
Seemingly for all the NFL Redskins fans out there, Washington will be allowed to attain a federally registered trademark and protect its branded club. It should be noted, irrespective of the Trademark Office and whether a trademark is federally registered, a name can still be used as a trademark under state and federal common-law and its protection is dependent on use in commerce.
This opinion will undoubtedly spur further controversy. While the band sought to take control of a disparaging name and “own it” for positive purposes, one can imagine that other groups will seek to register names or logos that would be regarded as racist or ethnic slurs simply for the sake of a owning a piece of offensive. At any rate, this case was a victory for the 1st Amendment and freedom of speech.
Article Written by Michael Kinzer, J.D. candidate, and John Buche, J.D. The law firm of Buche & Associates, P.C. specializes is intellectual property matters, including trademark litigation and registration. www.texasinvent.com