Recently, the United States Supreme Court decided a case involving a musical group which promises to have a broad reach affecting the entire area of Trademark law.

Simon Tam had been made fun of when he was younger, because of his Asian ancestry.  When he grew up, he formed an Asian-American rock band called “The Slants;” taking a derogatory racial slur and trying to reclaim it to make it a point of pride.  However, when he tried to register the Trademark with the United States Patent and Trademark Office (“USPTO”), his registration was denied because the term was seen as derogatory.[1]

The Lanham Act, the group of statutes governing the registration of federal trademarks, contains a provision that prohibits registration of any trademark that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”[2]  This clause of the Lanham Act has been used to prevent or cancel the registration of numerous trademark.  Perhaps most famously, it was used in the argument to cancel the registration of the Washington Redskin’s trademark in 2014.[3]  Despite Tam’s desire to reclaim the term “The Slants” as a positive term, the term was seen by the USPTO as disparaging or derogatory to a substantial portion of the Asian population, and registration was prevented.

In a unanimous decision, despite differences in reasoning among the justices, illustrated by four separate concurring opinions, the entire US Supreme Court decided that the disparagement clause of the Lanham Act violates the First Amendment’s Free Speech Clause.[4]  The Slants were allowed to register the Trademark.

The First Amendment’s Free Speech Clause protects a person’s ability to express their viewpoint, even if it is one that is unpopular or that may offend another.  The government cannot discriminate against or prevent someone’s expression of an idea simply because of the viewpoint it expresses.  It is one of our most basic freedoms, which helps to open dialogue and allows people to freely discuss even the most controversial of topics. 

It was previously thought and argued that when the USPTO registered a Trademark the Trademark was thereby transformed into “government speech,” which could then be regulated by the government.  Under that theory, the government could then choose to not endorse disparaging speech and could therefore refuse to register a trademark containing such speech.  However, the US Supreme Court, in Tam, has now held that the registering of a Trademark does not convert that speech into government speech.  As a result, the government cannot regulate the speech in that way, because it would be discriminating against the speech due to its viewpoint.  The disparagement clause of the Lanham Act was found to be unconstitutional, and The Slants are able to register their trademark. 

It is expected that this case will have a great impact in the area of Trademark law, as there have been countless trademarks which have been denied registration as disparaging. 

If you feel that your trademark or right to free speech is being hindered in some way, contact the trial attorneys at Goosmann Law Firm, PLC, so that we can help you navigate this ever changing area of law. Stop in to our Omaha law firm, Sioux City law firm, or Sioux Falls law firm.


[2] 15 U.S.C. §1052(a).


[4] Matal v. Tam, 582 U.S. ___ (2017).


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