SCOTUS: Disparagement clause of Lanham Act is unconstitutional

A few weeks back, our blog spent some time discussing a groundbreaking decision by the Supreme Court of the United States in TC Heartland v. Kraft Foods Group Brands, which essentially served to end the practice of forum shopping in patent litigation.

It's proving to be an exceedingly busy term for the nation's high court, at least from an intellectual property perspective, as it handed down yet another groundbreaking decision just yesterday in Matal v. Tam, a case examining whether the rejection of trademarks deemed disparaging violates the First Amendment.

The case centers around an Asian American rock band calling itself the Slants, which saw its application to register a trademark for the band's name rejected by the U.S. Patent and Trademark Office.

Here, despite the founder's assertion that he and his bandmates were attempting to reclaim a racial slur and deploy it as "a badge of pride," the U.S. PTO found the name was disparaging, and, as such, could not be trademarked.  

The "disparagement clause" of the Lanham Act, the landmark 1946 law, holds in part that the U.S. PTO cannot register trademarks that "may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."

After initial court defeats, the band's founder filed an appeal with the U.S. Court of Appeals for the Federal Circuit, the Washington D.C.-based patent court, which found that this provision of federal trademark law violated the First Amendment's guarantee of free speech.

The matter was appealed to SCOTUS, which unanimously affirmed the ruling of the Federal Circuit in an opinion published yesterday.

Writing for the majority, Justice Samuel Alito indicated that the disparagement clause of the Lanham Act, while drafted in a neutral manner, nevertheless violated the First Amendment and was therefore unconstitutional.

"We now hold that this provision violates the Free Speech Clause of the First Amendment," he wrote. "It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."    

While some legal experts expressed concerns that the decision could potentially lead to a wave of offensive trademarks being registered, many others championed it as victory for free speech.

Among the latter were the Washington Redskins professional football franchise, which filed an amicus brief in the Matel case.

Back in 2014, the team saw its trademark registration canceled back after decades of protection on the grounds that it was disparaging to Native Americans. After an unsuccessful attempt to have the registration cancellation overturned in a federal district court in Virginia, the team appealed to the U.S. Circuit Court of Appeals for the Fourth Circuit, which was awaiting the decision in Matel.

It will be interesting to see how SCOTUS' decision in Matel affects this case. Stay tuned for updates …   

Consider speaking with an experienced legal professional if you have questions or concerns relating to intellectual property.