Supreme Court Strikes Down Lanham Act’s “Disparagement Clause” for Violating the First Amendment

Written by: John W. McGlynn, Alyssa R.M. Pugh

Declaring that “[s]peech may not be banned on the ground that it expresses ideas that offend,” the U.S. Supreme Court in Matal v. Tam (No. 15-1293) held that Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)) is facially unconstitutional for violating the Free Speech Clause of the First Amendment. The salient section of the Lanham Act bars a trademark from federal registration that “[c]onsists of or comprises … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ….”

The ruling stemmed from an unsuccessful attempt by Simon Tam, an Asian-American, to federally register the mark “THE SLANTS” for his rock band. The U.S. Patent and Trademark Office (USPTO) Examining Attorney refused to register the trademark under § 1052(a) as disparaging to Asians, and Tam’s appeal to the Trademark Trial and Appeal Board (TTAB) failed. Tam took his case to the Federal Circuit, where an en banc panel found § 1052(a) unconstitutional under the Free Speech Clause of the First Amendment.

Dubbing § 1052(a) “the disparagement clause,” Justice Alito delivered the opinion of the Court upholding the Federal Circuit’s decision. First, the Court found that “[t]rademarks are private, not government, speech.” The Court disagreed with the Government’s argument that federal registration of trademarks converts a trademark into government speech, countering that trademark registration does not constitute government approval of the viewpoint expressed by the mark. The Court further opined that extending the realm of government speech, which is not governed by the First Amendment, to cover federal trademark registration would be “a huge and dangerous extension of the government-speech doctrine,” because it would allow the government to “silence or muffle the expression of disfavored viewpoints” in various situations involving government registration, including copyright registration. Because trademark applicants pay government fees to receive a registration, not receive government funding, the Court also dismissed arguments that federal trademark registration is a government subsidy or a “government-program,” in which some content based restrictions may be permissible.

Finding no need to determine whether trademarks are exclusively commercial in nature or if they include “an expressive component,” the Court held that the “disparagement clause” could not withstand even the relaxed constitutional scrutiny applied to commercial speech under Central Hudson Gas & Elec. Corp. V. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980), because the clause was not “narrowly drawn” to protect a “substantial interest” of the government. Characterizing the first “substantial interest” proffered by the Government as “preventing speech expressing ideas that offend,” the Court dismissed the interest as explicitly “strik[ing] at the heart of the First Amendment.” The Court further found that § 1052(a) was not narrowly drawn to serve the substantial interest of “protecting the orderly flow of commerce” from “disrupt[ion] by trademarks that ‘involv[e] disparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar demographic classification.’” The Court noted the “disparagement clause” was not limited to preventing registration of “trademarks that support invidious discrimination,” pointing out that marks found disparaging of racists, sexists, or homophobes would also be refused registration.

In a spirited concurrence, Justice Kennedy opined that § 1052(a) of the Lanham Act constituted “viewpoint discrimination” — reflecting the Government’s disapproval of a subset of messages it finds offensive — and therefore subject to the most intense constitutional scrutiny, which the “disparagement clause” failed to withstand.