Under the disparagement clause of the Lanham Act, 15 U.S.C.§ 1052(a), the United States Patent and Trademark Office (“USPTO”) could reject offensive trademarks. This week, the United States Supreme Court ruled that the failure of the government to register marks simply because they may be disparaging or offensive unconstitutionally violates free speech rights.

The case involved the Asian-American band “The Slants”, who sought to register their band name with the USPTO.  After the band was denied trademark registration in 2011 because the name was found to disparage a racial or ethnic group, the lead singer turned to the courts and claimed their intention is to reclaim and take ownership of stereotypes about people of Asian ethnicity and it is a violation of their First Amendment rights to be denied the ability to do so.

In Matal v. Tam, No. 15-1293, silp op. (S. Ct. June 19, 2017), the Supreme Court held that the disparagement clause, which disallowed marks that “may disparage” persons from receiving federal trademark registration, is unconstitutional.  Justice Alito, authored the Opinion, which was joined in part by all of the Justices (excluding Justice Gorsuch who did not participate).  The Opinion explained the disparagement clause violates the free speech clause of the First Amendment.

The Court explained the disparagement clause is a viewpoint discriminatory law because it denies trademark registration for marks that may disparage persons, institutions, beliefs, or national symbols, while at the same time allowing registration of words or symbols that are positive or benign.  Therefore, the law is subject to constitutional inquiry since the USPTO is discriminating based on a specific viewpoint of discouraging the use of offensive trademarks. Private parties seeking trademark registration of potentially offensive marks are denied their First Amendment right to free speech when the USPTO or government denies the trademark registration due to a specific viewpoint. Therefore, the disparagement clause is unconstitutional.

This decision will allow for future trademark registration of marks that include racial epithets, but the door was left open regarding other marks that may be deemed “scandalous” or “immoral”.