Last fall I wrote a post about the pending case, Matal v. Tam, before the United States Supreme Court that had implications for everyone. The blog dealt with a section of the federal trademark statute, 15 U.S.C. § 1052(a), which authorizes the United States Patent and Trademark Office (PTO) to refuse registration of marks that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” As I pointed out in my post, in recent history the PTO has engaged in overt, rank hypocrisy in applying this statute to allow some marks to register while refusing others.
The facts of Matal v. Tam, are quite simple. Simon Tam is a member of the musical group, the Slants. The Slants are made up of a constituency of musicians of Asian heritage. Tam filed an application to register the band’s name as a service mark for live performances by a musical group. The PTO refused the application based upon §1052(a). That refusal was appealed to the United States Court of Appeals for the Federal Circuit. In December 2015, that Court found §1052(a) to be an unconstitutional infringement of free speech. Not surprisingly, the government appealed the finding of unconstitutionality to the Supreme Court and, also not surprisingly, the Supreme Court agreed to hear the case.
On June 19, 2017, the Supreme Court unanimously ruled the disparagement clause noted above violates the First Amendment’s Free Speech Clause. In delivering the opinion of the Court, Justice Alito wrote:
We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.
In the words of the Court, trademarks are private speech, not government speech. Private speech is protected by the First Amendment. Per the Court: “giving offense is a viewpoint.” Thus, the ban on marks that may be disparaging to some group constitutes viewpoint discrimination.
And, there you have it. The PTO is not a safe space, sheltered from offensive marks.
So what does this ruling mean for businesses? Well for those businesses that want to have edgy or socially provocative marks, the path to registration just became a lot clearer, simpler and cheaper. Those businesses will no longer have the government’s hypocritical foot on their throats forcing them to abandon marks the government deems offensive. On the other hand, those businesses need to be careful for what they wish. Launching a business or product with a brand that may offend a particular ethnic group likely will not work for all but a few companies and could create a lasting public relations debacle.