“Viewpoint Discrimination in the Lanham Act: No More?”

June 19, 2017
Marshall Gerstein Alert

Prohibiting federal registration for “disparaging” marks constitutes viewpoint discrimination and is unconstitutional says the Supreme Court.

In deciding the case of Matal v. Tam (formerly known as Lee v. Tam), the Court dedicated much of its opinion to the question of whether trademarks−more specifically−federal trademark registration constituted government speech. Not surprisingly, that question was answered in the negative. In particular, the Court determined that the U.S. Patent and Trademark Office improperly denied trademark registration for the name of the band “The Slants,” on the basis that “slants” is a derogatory term for persons of Asian descent. The Court expressed serious concern with the government speech argument noting that, “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.” The Court then went on to quickly dispose of the question “whether trademarks are commercial speech and are thus subject to the relaxed scrutiny outlined in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U. S. 557 (1980).” Instead of resolving the differing viewpoints of the parties on the issue, the Court stated that the disparagement clause cannot withstand even relaxed scrutiny where “a restriction of speech must serve ‘a substantial interest,’ and it must be ‘narrowly drawn.’”

Ostensibly, the decision could also bring to a conclusion Pro Football, Inc.’s decades-long battles surrounding its federal registrations of REDSKINS marks. Another rather interesting question to ask is whether the decision in Matal v. Tam eventually leads to the additional Lanham Act prohibitions against registration of “immoral” and “scandalous” marks being overturned.

Whether or not there will be a rush to register disparaging marks with the USPTO remains to be seen. An uptick may be expected but probably from those otherwise would-be applicants seeking to bring social issues to light (like Tam) or simply as a means to protect a controversial (intentional or not) commercial identity.

For more information, please contact Gregory J. Chinlund or another attorney at Marshall Gerstein.

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