Trademark registration allows businesses to protect some very valuable assets—the names, logos, and related designs that clearly identify them to the public. The U.S. Patent and Trademark Office (USPTO) oversees trademark registration in accordance with the federal Lanham Act, which prohibits the registration of marks under certain circumstances. Section 2(a) of the Lanham Act, known as the Disparagement Clause, bars the USPTO from registering any mark that “may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a). The statute does not define “disparage,” and this vagueness is part of what led the U.S. Supreme Court to strike down the Disparagement Clause as a violation of the First Amendment right to free speech. Matal v. Tam, 582 US ___ (2017).
Both the USPTO and the Trademark Trial and Appeal Board (TTAB) acknowledge that “disparagement” is a highly subjective concept that must be evaluated on a case-by-case basis. The TTAB has identified two factors that can help identify material that might be barred by the Disparagement Clause. First, would a reasonable person, considering the context of the mark, interpret it as “refer[ring] to an identifiable” person or group of people? Second, would a “substantial composite” of that group of people view the mark as disparaging? See Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705 (TTAB 1999); see also 284 F.Supp.2d 96 (D.D.C. 2003), 415 F.3d 44 (D.C. Cir. 2005).
The Harjo case referenced above involved a professional football team with a name believed by many to be disparaging to Native Americans. The proposed trademark at issue in Matal is generally known as a disparaging term for people of Asian descent. The plaintiff in that case is a member of a band who uses the word as its name and who sought to register it as a trademark. The band members, all of whom are of Asian descent, stated that they wanted to “drain [the word’s] denigrating force as a derogatory term for Asian persons.” The USPTO rejected the application under § 2(a). The plaintiff appealed, claiming in part that the Disparagement Clause is an unconstitutional content- or viewpoint-based restriction on speech.
The Supreme Court ruled for the plaintiff. It affirmed the Federal Circuit Court of Appeals’ holding that “the First Amendment protects even hurtful speech.” In re Tam, 808 F.3d 1321, 1328 (Fed. Cir. 2015). The Supreme Court’s ruling held, perhaps most importantly, that trademarks are “private speech,” rather than “government speech,” and therefore they are not subject to viewpoint-based restrictions.
The ruling was 8-0, although different justices agreed with the court’s ruling for different reasons. Justice Alito wrote the opinion for the court but was only joined by three justices—Roberts, Thomas, and Breyer—for about half of the legal analysis. The remaining justices—Kennedy, Ginsburg, Sotomayor, and Kagan—concurred with the portion of the ruling stating that the Disparagement Clause is a form of unconstitutional viewpoint discrimination. Justice Gorsuch was not yet part of the court when oral arguments occurred, so he did not participate in the ruling.
Trade secret lawyer James G. Schwartz has advocated for the rights and interests of Bay Area businesses and business owners, in both litigation and transactional matters, for the past four decades. To schedule an initial confidential consultation with a member of our experienced and knowledgeable team, contact us today online or at (925) 463-1073.
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