Supreme Court Protects Free Speech on Trademarks

By at 20 June, 2017, 1:50 pm

THE SLANTS win their case, and entrepreneurs win too

by Raymond J. Keating-

If you deal with the public, chances are these days that you – whether intending to or not – will somehow offend someone. Businesses and individuals now operate in the era of the easily offended. Indeed, so pervasive is the ability to be offended that some in government have perceived a political advantage in generating offense or in coming to the so-called defense of the easily offended.


Thankfully, in its decision in Matal, Interim Director, United States Patent and Trademark Office v. Tam, the U.S. Supreme Court unanimously came to the defense of the First Amendment and freedom of speech.

In this particular case, Simon Tam, lead singer for The Slants, sought to register the mark “THE SLANTS,” but the Patent and Trademark Office denied the request, citing the Lanham Act provision prohibiting “the registration of trademarks that may ‘disparage . . . or bring . . . into contemp[t] or disrepute’ any ‘persons, living or dead.’ 15 U. S. C. §1052(a).” Tam lost his administrative appeal, went to federal court, and “the en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.” The U.S. Supreme Court affirmed the lower court.


Writing for the Court, Justice Sam Alito explained, “We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

(By the way, it is worth simply noting for clarification purposes that the band members, who are Asian-American, chose the name in order “to ‘reclaim’ the term and drain its denigrating force.”)

In his opinion, Alito also made clear that the government’s contention that issuing a trademark somehow represents the government speech or approval:

“In light of all this, it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. See App. to Brief for Pro-Football, Inc., as Amicus Curiae. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

“For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)? Was the Government warning about a coming disaster when it registered the mark ‘EndTime Ministries’?

“The PTO has made it clear that registration does not constitute approval of a mark.”

As for this being a matter of commercial speech, Alito emphasized the need for strong free speech protections: “There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.”

Freedom of Speech Wins

The Supreme Court made a strong and necessary defense of freedom of speech. That’s good news for individuals and businesses – including, for example, the NFL’s Washington Redskins, as the team had six of its trademarks revoked in 2014 as they were deemed offensive and disparaging.

In a concurring opinion, Justice Anthony Kennedy pointed out: “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”

Indeed, among the many wonders of a free society is that government cannot suppress all kinds of speech, and in the commercial arena, consumers have ultimate say over what they like or don’t like, or what they might be – dare I say it? – offended by or not offended by. In the end, freedom, coupled with individual responsibility, works.


Raymond J. Keating is chief economist for the Small Business & Entrepreneurship Council.

Keating’s latest book published by SBE Council is titled Unleashing Small Business Through IP:  The Role of Intellectual Property in Driving Entrepreneurship, Innovation and Investment and it is available free on SBE Council’s website here.

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