The Lanham Act had some language struck out of it by the Supreme Court today. In the trademark world, this qualifies as Big News.
A superbrief history: The Slants are a band out of California made up entirely of Asian Americans. Simon Tam, the lead singer, filed an application for registration*** of the trademark THE SLANTS, which was refused because Section 2(a) of the Lanham Act prohibited registration of marks that “disparage . . or bring into contempt or disrepute . . . any persons, living or dead.” He appealed to the Trademark Trial and Appeal Board and was refused, but the Federal Circuit, in an en banc decision, found the so-called “Disparagement Clause” unconsitutional on its face. The Supreme Court just affirmed.
***This is Very Terrible for the other members of The Slants.  Much has been written on what happens when a trademark is registered in the name of a single band member and the band breaks up.  If you are the guitar player or the drummer instead of the lead singer, NEVER EVER LET THIS HAPPEN.

The Court held that the Disparagement Clause is unconstitutional insofar as it requires viewpoint discrimination. Trademarks are not government speech, regardless of whether the registration bears the seal of the U.S. government. (In my favorite example, if trademarks were speech attributable to the government, it is unlikely that there would be a registration for Old Glory Condoms). Alito’s opinion seems to invite Congress to narrow the Disparagement Clause so that it does not simply apply to speech that disparages “any persons, living or dead,” although the instructions as to what would save the prohibition are less than forthcoming and Congress is going to amend trademark law exactly on the Twelfth of Never. And at any rate, Alito makes it pretty clear that as despicable as we find hate speech, protecting it is precisely what the First Amendment is about.

But no matter how the point is phrased,
its unmistakable thrust is this: The Government has an
interest in preventing speech expressing ideas that offend.
And, as we have explained, that idea strikes at the heart
of the First Amendment. Speech that demeans on the
basis of race, ethnicity, gender, religion, age, disability, or
any other similar ground is hateful; but the proudest boast
of our free speech jurisprudence is that we protect the
freedom to express ‘the thought that we hate.’

Kennedy’s concurring opinion stands more firmly on the position that the Disparagement Clause is necessarily unsupportable viewpoint discrimination. Kennedy tackles head-on the question of whether trademark is “commercial speech” wherein restrictions against it would be given a lower level of scrutiny. There is a circularity to his reasoning that is not particularly helpful in the advancement of First Amendment jurisprudence (“To the extent trademarks qualify as commercial speech, they are an example of why that term . . . does not serve as a blanket exemption from . . . requirement[s] of viewpoint neutrality. . . These marks make up a part of the expression of everyday life.”) So in other words, they are not protected from prohibitions against viewpoint discrimination to the extent they are commercial speech, because they are VERY commercial speech. One way to read this logically, though, is that Kennedy is opening the door to merging the tests for commercial and private speech.
Trademark and Constitutional lawyers will be parsing this case for a while. Truly, this is a constitutional case more than it’s a trademark case, I’m not a constitutional expert, so I’m looking forward to reading about what they think of the future of the tests for commercial speech restrictions. As to what it means for the trademark world:

  1.  The Redskins get to keep their registrations. (But everybody except Dan Snyder knows they shouldn’t).
  2. There are other clauses in Section 2(a) of the Lanham Act that are in very serious danger following the Tam case. Section 2(a) also prohibits registration of “immoral, deceptive, or scandalous” matter. Under the reasoning of Tam, the words “immoral” and “scandalous” are definitely on the chopping block. “Deceptive” may not be on its face a viewpoint discriminatory term, but left out there on its own in the middle of Section 2(a), it sure starts to look pretty unconstitutionally vague.
  3. For non-trademark lawyers stumbling upon this blog: Regardless of whether Simon Tam won or lost this case, he could always call his band The Slants.  Registration is not really about your ability to use a mark. It is about the tools you have at your disposal for preventing others from using the same or a similar mark on the same or related goods. This wasn’t about whether the government could stop Tam from saying something “disparaging.” It was about whether they would put their government seal on it.
  4. Immediately following today’s decision, we will see a glut of new applications for mean and hateful marks. And they will all be for t-shirts, and most of them will fail for the same reasons that most applications for memes and popular phrases fail, namely, that there will be no business plan behind it, and no plans for use or commercialization. So in other words, life likely goes on much as before.

Tara Aaron

Tara helps clients across multiple industries and countries with licenses and disputes involving trademarks, copyrights, domain names, software, trade secrets, and privacy compliance. She earned her Certified Information Privacy Professional (CIPP) in U.S. Privacy Law in 2018 and in European Data Protection Law in 2019. Her clients include many technology start-ups, software developers, and website designers as well as long-standing institutional clients who come to her for representation in copyright, trademark, licensing and privacy. She also assists with the purchase and sale of intellectual property assets. She has on multiple occasions successfully obtained hijacked domain names for the rightful owners, and regularly negotiates service and technology agreements with the largest telecommunications and software providers in the country.