Can the government refuse trademark protection for a name that is considered offensive or disparaging? Until recently, the answer to this question was “yes.” However, in a unanimous decision, in Matal v. Tam (formerly Lee v. Tam), the Supreme Court of the United States (SCOTUS) ruled that members of an Asian-American rock band, the Slants, have the right to register their disparaging name for trademark protection. Only eight justices ruled on this case as Justice Neil Gorsuch was not on the Court when the case was argued.
A little over a decade ago, bassist Simon Tam formed a band composed entirely of Asian-Americans and decided to name the band the Slants. His intention behind the name was to put a new spin on the historically derogatory term and make it empowering. While touring, he crossed paths with two other bands with the same name. He decided it was in the band’s best legal interest to trademark the name, as it would establish their brand and provide legal protections against other groups with the same name. The United States Patent and Trademark Office (USPTO) denied the group’s trademark application citing the Lanham Act, which forbid the registration of marks considered “scandalous, immoral, or disparaging.” The Slants case raised questions about government efforts to police names that may be offensive to one group or another.
The United States Court of Appeals for the Federal Circuit (CAFC) ruled in favor of the band and held that failure to register the Slants’ trademark amounted to a violation of the First Amendment. On Monday, the Supreme Court sided with the Slants, striking down a section of the law that called for making assessments about whether the name was derogatory or offensive. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend,” Justice Samuel Alito wrote in the unanimous decision.
Alito further wrote that “[t]he disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech.” Under the Free Speech Clause, the government cannot decide which viewpoints it likes and does not like. Stressing that trademark law is primarily designed to assist consumers in distinguishing between products and to safeguard companies’ investments in their name and brand, the Court regards governmental regulation of free speech as outside the scope of trademark law.
Washington’s pro-football team, the Redskins, have been closely following this case as they have been in danger of losing their trademark protection due to the controversial nature of their team’s name. In 2014, the USPTO concluded that the team could not trademark its name because anything that is “scandalous, immoral, or disparaging” is prohibited from trademark registration. This was further reinforced in 2015 when the federal office and a federal judge for the Eastern District of Virginia said that the team should have its trademark revoked because the name was offensive to Native Americans. The USPTO canceled six of the team’s trademarks after receiving pushback from Native American activists. The team appealed and if the 4th US Circuit Court of Appeals uses the Slants case as a precedent, it seems likely that the team will prevail on appeal.
While the Redskins must wait for the end of their legal battle, the Slants can breathe a sigh of relief and enjoy their victory. “After an excruciating legal battle that has spanned nearly eight years, we’re beyond humbled and thrilled to have won this case at the Supreme Court,” the band said in a statement. “This journey has always been much bigger than our band: it’s been about the rights of all marginalized communities to determine what’s best for ourselves.”