The Supreme Court held today that the government can't refuse to register trademarks because some may find the trademarked words offensive.

The opinion in Matal v. Tam means that Simon Tam, lead singer of an Asian-American rock band called "The Slants," will be able to trademark the name of his band. It's also relevant for a high-profile case involving the Washington Redskins, who were involved in litigation and at risk of being stripped of their trademark.

The court unanimously held that a law on the books holding that a trademark can't "disparage... or bring... into contemp[t] or disrepute” any "persons, living or dead," violates the First Amendment.

Tam headed to federal court years ago after he was unable to obtain a trademark. In 2015, the US Court of Appeals for the Federal Circuit ruled in Tam's favor, finding that the so-called "disparagement clause" of trademark law was unconstitutional.
The US Patent and Trademark Office appealed to the Supreme Court. Government lawyers argued that trademarks were government speech, not private speech, and that trademarks should be considered as either a form of government subsidy or a government program, not a citizen's "free speech." The high court took the case, and oral arguments were held earlier this year.

“A happy-talk clause”

The court's ruling begins by briefly reviewing the history of trademark law. Federal trademarks were first created in 1870. By the time Congress passed the current foundational trademark law in 1946, trademarks "often consisted of catchy phrases that convey a message," the court noted. While federal registration of a trademark isn't required, it "confers important legal rights and benefits."

The opinion goes on to call the idea that trademarks are government speech "far-fetched." Justice Samuel Alito writes for the court:

If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

... [W]hat does the Government have in mind when it advises Americans to “make.believe” (Sony), “Think different” (Apple),11 “Just do it” (Nike), or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”?
The cases about government subsidies aren't applicable to trademarks since they all concern programs that involve "cash subsidies or their equivalent." In trademarks, by contrast, the applicant pays the government hundreds of dollars for the privilege of registration.

There are cases where government creates "a limited public forum for private speech," which the justices viewed as potentially similar to the Tam trademark case. But in those cases, viewpoint discrimination is forbidden.

The court acknowledges that the anti-disparagement clause seeks to serve all, barring registration if a "substantial percentage" of any group might be offended. "It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue," writes Alito. "But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint."

The all-encompassing nature of the ban makes it even worse, in Alito's view, due to overreach.

"It applies to trademarks like the following: 'Down with racists,' 'Down with sexists,' 'Down with homophobes,'" he writes. "It is not an anti-discrimination clause; it is a happy-talk clause."
"The proudest boast of our free speech jurisprudence is that we protect the freedom to express 'the thought that we hate,'" Alito concludes.

Justice Anthony Kennedy wrote a separate, concurring opinion that was also signed by Justices Ruth Bader Ginsburg, Sonia Sotomayor, and Elena Kagan. Those four justices agreed with the overall conclusion of the court but don't sign on to some parts of the analysis, arguing instead that the constitutional ban on "viewpoint discrimination" renders some of the majority's analysis unnecessary. They further argue that whether or not trademarks are commercial speech—an issue not resolved by this opinion—the issue deserves the "heightened scrutiny" required when analyzing government regulation of speech.

Justice Neil Gorsuch, who joined the court in April, didn't take any part in the decision.

Today's ruling will affect a trademark that has far more commercial value than The Slants—that of the NFL team Washington Redskins. The USPTO and a federal court had previously ruled that the Redskins mark was subject to cancellation due to the anti-disparagement clause. Following Matal v. Tam, the controversial football trademark is likely safe from legal cancellation, though not from ongoing criticism.



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