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  • Writer's pictureSarah Morris Ocampo

Disparaging Trademarks and the Redskins

On June 19, 2017 The U.S. Supreme Court ruled in Matal v. Tam that a portion of the Federal Trademark Laws that banned disparaging trademarks was unconstitutional under the First Amendment. This case centered on a band named “The Slants”. Although that term may be used in a derogatory fashion, the band, whose members were Asian-American, wanted to reclaim the term by taking it as their name. They were denied registration by the U.S. Patent and Trademark Office because the term was deemed to be disparaging, and 15 U.S.C. § 1052(a) will not permit a mark which “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”[1]

After exhausting administrative appeals through the USPTO, Simon Tam, the band’s singer, took to the Federal Courts. Eventually, the case made its way to the Supreme Court. The Supreme Court held that the disparagement clause violates the protections of free speech.

The government’s primary argument in support of the disparagement was that trademarks were a form of government speech. The Court reasoned that while the government may provide some protection for the trademarks through registration, it does not itself create the trademarks or endorse them. The Court noted that “If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”[2] A concurrence, authored by Justice Kenney also pointed out that “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.”

Once the preliminary matters were handled, the Court found that the disparagement clause did not support a substantial interest in a way that was narrowly drawn. Since it did not meet that, the clause had to be struck down.

This case has direct implications for the Redskins trademark. Virtually the only meaningful argument against it, in a legal sense, was that the mark was disparaging. Now that disparaging marks have been found to be protected by the Constitution, it is virtually certain that the case around the Redskins trademark will be resolve to allow the mark to be fully registered.

If you have any questions about trademarks or registration, you should consult a qualified trademark lawyer.

[1] 15 U.S.C. § 1052(a) also bans trademarks which are “a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.” This restriction on false geographical implications for wines was not at issue in this case and survives after the rest of the section was struck down in this case.

[2] The Court also dispatched with arguments that the government subsidizes trademarks or that a new category of “government-program” speech should be created and evaluated.

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