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IP and Tech Law Alert: Trademark Rights and Free Speech Update – Prohibition Against Disparaging Trademarks Is Unconstitutional

June 23, 2017

Last year, the IP and Tech Law Alert highlighted the appeal of Lee v. Tam and the issue of whether free speech rights trump a federal law that bars the registration of disparaging trademarks. The case concerned an Asian-American dance-rock band called the Slants. The trademark dispute began when the Patent and Trademark Office (“USPTO”) denied the “Slants” trademark registration because the name has been used to disparage people of Asian descent. Section 2(a) of the Lanham Act bars the USPTO from registering scandalous, immoral or disparaging marks. 15 U.S.C. § 1052(a).

This week, the Supreme Court unanimously ruled in favor of the Slants, holding that the federal government’s ban on offensive trademark registrations violates the First Amendment. Justice Samuel Alito delivered the opinion of the Court, writing: "It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." The Court first rejected the argument that trademarks are government speech, as opposed to private speech. On this question, the Court unanimously agreed that federal registration of a mark is not government speech or even government approval of a mark. Concurring in the judgment, Justice Anthony Kennedy, joined by Justice Ruth Bader Ginsburg, Justice Sonia Sotomayor, and Justice Elena Kagan, agreed that trademarks are not government speech, but their concurring opinion was more specifically grounded in their finding that Section 2(a)’s prohibition on disparaging registrations was the very “essence of viewpoint discrimination.”

The decision clearly has implications far beyond the issue of whether the Slants can receive a federal trademark registration for its name. The section at issue has been a part of the Lanham Act since it was enacted in 1946. For years, courts have consistently upheld and applied the disparagement provision. This week’s decision shows a willingness for the Court to strike down law, even long-standing ones, that discriminate on the basis of viewpoint.

For starters, the case will undoubtedly impact the Washington Redskins, who have been in a dispute with the Trademark Office over allegations that the team's name was disparaging toward Native Americans. The decision is seen as a clear victory for the Redskins, whose brief was cited by Justice Alito in his opinion. Redskins owner Dan Snyder has repeatedly said that he will not change the nickname and proclaimed the Supreme Court’s decision as vindication of the team’s position. The Supreme Court rejected an appeal from the Redskins trademark case in October, denying the petition for review before a lower court had a chance to rule on the matter. The Supreme Court’s decision in Lee v. Tam is widely viewed as a harbinger the ultimate fate of the Redskins’ trademark.