How will the Supreme Court’s new rule barring the government from refusing offensive trademarks affect the marketplace?

Manisha Reddy
Associate Editor
Loyola University Chicago School of Law, J.D. 2019

On June 19, 2017, the Supreme Court, in an 8-0 ruling, found that the government can no longer sensor trademarks on the grounds that they may be offensive. In Matal v. Tam, the Supreme Court Justices found the seventy-one year old rule allowing the government to refuse offensive trademarks to be unconstitutional and to violate free speech and first amendment rights. The justices were unable to agree on exactly what legal standard was to apply to the present case or future cases. The revocation of this seventy-one year old rule that has affected the registration of many marks over the years is bound to have an effect on the future of trademark law and trademark litigation. Immediately following the Supreme Court’s decision, the United States Patent and Trademark Office (USPTO) was inundated with requests to register offensive trademarks.

Supreme Court’s Ruling

The ruling came out of a USPTO case where the office refused to register a band’s name, “citing a law that denied trademarks that disparage individuals, institutions, beliefs or national symbols.” An Asian-American rock band, The Slants, filed a lawsuit against the USPTO after they refused to register their band name; a federal court sided with the band. But the USPTO then sued to avoid being compelled to register the trademark (“mark”). The Supreme Court eventually found in favor of the band and ruled that the USPTO could not refuse to register the mark because they considered it to be offensive. Supreme Court Justice Samuel Alito said that “the disparagement clause violates the First Amendment’s Free Speech Clause [and] contrary to the Government’s contention, trademarks are private, not government speech.” The government argued that the law did not infringe on free speech rights because the band was still free to use “The Slants” name even without trademark protection. Trademark protection affords registrants the ability to give the public notice about the mark, the exclusive right to use the mark nationwide to distribute goods and services, the ability to prevent fake goods from coming in, and the ability to bring legal action for infringement, among other rights. The Slants argued that it is not for the government to decide who deserves protection and who does not.

Previous Cases

In a similar case three years before this ruling the Washington Redskins made a similar argument. In 2104, the USPTO cancelled the Washington Redskin’s trademark arguing that the name offends Native Americans. The trademark office raised no concerns about the Redskins mark and continued to renew the registration in 1967, 1974, 1978 and 1990, but then the office canceled the registration in 2014. The cancellation of their registration meant that the Redskins would now be afforded limited legal protection when other entities or people used the name and logo without permission. The Redskins then sued the USPTO and the case was put on hold until The Slants decision. After The Slants decision came out the team made a statement that “the Supreme Court vindicated the Team’s position that the First Amendment blocks the government from denying or canceling a trademark registration based on the government’s opinion.”

Trademark Registration

This landmark decision in The Slants case is likely to open the floodgates to evaluate older rules and reevaluate public and private rights. The cases discussed above illustrate the huge stakes involved with losing federal trademark protection. Registration of a trademark by the USPTO makes it easier for a party to assert legal protection against others who try to use the mark. Additionally, trademark registration provides notice nationwide of the ownership of the mark and prevents others from registering confusingly similar marks. The U.S. Code also includes a prohibition on trademarks for immoral and scandalous material; this rule was not addressed in the Supreme Court’s decision in The Slants case. This leaves the door open for future registration refusals on similar grounds that the Supreme Court just ruled was a violation of our first amendment rights. While The Slants case was pending the USPTO refused to register several marks that could be considered immoral and scandalous material. Since The Slants case, the Supreme Court has made no further comments on those rulings and have continued to issue refusals on those grounds. It seems that the USPTO still has the authority to refuse to register marks for similar reasons that The Slant case was meant to overturn. It will be a waiting game to see how the Supreme Court addresses this issue in the future.