Disparaging Trademarks and Free Speech – Will the Supreme Court Strike Down the Disparagement Clause?

15 U.S.C. 1052(a) and its validity was examined in Lee v. Tam. The question is, will the Supreme Court strike it down?

The statute in question is the “disparagement provision” of the 1946 Lanham Trademark Act, which prohibits the registration of any mark that “may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Registration of a trademark provides nationwide protection against others from using the name. In 2011, when Yuya Matsuda, Ken Shima, and Simon Tam sought to trademark the name of their band ‘The Slants,’ the U.S. Patent and Trademark Office (PTO) rejected the application explaining that the provision in question bars the government from approving disparaging trademarks. The PTO’s view was that the name of the band was likely to disparage a significant number of Asian Americans, despite the intent of Simon Tam and the band members, which was to reclaim a slur and use it as a “badge of pride.” Tam’s case was argued in front of the Supreme Court on January 18, 2017, addressing the issue of whether or not 1052(a) would be unconstitutional and invalid under the First Amendment.

Deputy Solicitor General Malcolm Stewart, arguing on behalf of the federal government, emphasized the distinction between the government program (trademark registration) putting a “reasonable limit” and the ability to use the mark as a way of expression. The Court was skeptical, however, and did not seem to be convinced that this statute was not making distinctions based on viewpoint—whether or not the trademark says good things about a person or a group, or bad things about a person of a group. Justice Kagan asked why the disparagement bar to obtain trademarks was a “fairly classic case of viewpoint discrimination.” Justice Ginsburg wondered if there would be a difference if the band was called ‘Slants Are Superior’ instead—would they have received trademark registration because it was not disparaging, while ‘The Slants’ would be denied? As she asked, “Does it not count at all that everyone knows that ‘The Slants’ is using the term not at all to disparage, but simply to describe?”

While the questions and comments by the justices seem to suggest that ‘The Slants’ might get their trademark, the Court did not seem satisfied with the arguments presented by the attorney for ‘The Slants,’ John Connell. Connell took a very firm stance and argued that the government had almost no leeway when presented with a trademark name. The justices seemed concerned that such a sweeping stance would discard the entire trademark examination process, allowing First Amendment protection for even the “absolutely outrageous speech in so far as trademarks are concerned,” as Justice Kennedy noted. Justice Sotomayor chimed in, and said that to say that the trademark office could not deny federal registrations that denigrated an individual or competitor’s product “makes no sense.” The Court questioned Mr. Connell about the fact that the provision does not bar ‘The Slants’ from calling themselves ‘The Slants,’ and using it as a way of expression, but only sets a disparaging standard before the government endorses it.

The justices seemed skeptical of denying disparaging trademarks, and the outcome of this case will very much affect another case involving the Washington Redskins (Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439). Their trademark registration was revoked in 2014 under the same clause because it disparages Native Americans. The Redskins appealed, but lost in a federal case where the court upheld the cancellation because the “marks consisted of matter that may disparage a substantial composite of Native Americans during the relevant time period.” Although the Supreme Court declined to review the Redskins case, if they throw out the disparaging provision in Lee v. Tam, it may be possible for the Redskins will get their trademark registration back, which explains the fact that they filed an amicus brief supporting ‘The Slants.’ However, Simon Tam stated that although there is some overlap in the two cases, they are not equivalent. There is a “fundamental difference between an Asian American dance rock band called ‘The Slants,’ and a football team owned by a white man, featuring no Native American players, called the Redskins.” Whether there is a legal distinction or not, the Supreme Court seemed to have wanted to distinguish between two cases by granting certiorari to one but not the other. The decision on Tam is still pending, and we will likely hear from the Court by the end of summer, and see what effects it will have on the Redskins trademark litigation.

Soung Young Choe is a JD candidate, ’18, at the NYU School of Law.