Matal v. Tam

The Supreme Court recently reviewed Matal, Interim Director, United States Patent and Trademark Office v. Tam (Matal v. Tam), which deals with trademark laws and what can be trademarked.  In fact, before the case reached the Supreme Court, we have previously discussed how much is unsettled in this area of trademark law. With this new decision, much of the law should be clearer with regards to what can be officially trademarked.

What are the case facts?

A rock group chose the band name “The Slants” because they wanted to “dilute the term’s denigrating force as a derogatory term for Asians.” When the band tried to trademark this name with the United States Patent and Trademark Office the application for registration was denied. The government agency denied the application because it was against 15 U.S.C. § 1052(a), also known as the Lanham Act, which prohibits the registration of any trademark that may disparage or bring into contempt any persons living or dead. The lead singer of the rock group, Simon Tam, challenged this denial initially through the administrative appeal process, which did not bring him any result. Then, Simon Tang brought his case to federal court. The federal court decided that the disparagement clause in the Lanham Act was unconstitutional because it violated the First Amendment’s Free Speech Clause. This decision was then appealed to the United States Supreme Court.

What was the Supreme Court’s decision?

The Supreme Court affirmed the decision by the federal circuit and also found that the disparagement clause was unconstitutional. The high court found that trademarks are protected by the Free Speech Clause because they are private speech and not speech by the government. Denying a trademark registration because it might be offensive to members of any group is not allowed because it is viewpoint discrimination. The Supreme Court stated that the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”  The high court found that the Lanham Act, also known as the disparagement clause, was just too broad because it protected every single person who is both alive and dead. This would get rid of a lot of free speech if it was allowed.

What is the decision’s impact?

This Supreme Court decision has had a major impact of what types of things can be trademarked. Now, there cannot be restrictions on things being trademarked just because they might be offensive to any particular group. This decision will have a major impact on the Washington Redskins case. The Washington Redskins are currently involved in a legal battle because the same law that was at issue in this case was used to prevent the Washington Redskins from registering any trademarks relating to the word “Redskins” and from protecting the logos that are used by the team.  This decision is basically a win for the Washington Redskins because they have a very similar issue that is now pending.  Due to the success in this case the Washington Redskins would will most likely obtain a similar result.

At our law firm, we assist clients with legal issues related to business, intellectual property, and e-commerce transactions. Please contact us to set up an initial consultation.