By Sarah Siddiqui. Sarah Siddiqui is a 2L at Sandra Day O’Connor College of Law. Before law school, she graduated from UCLA with a degree in political science. Currently, Sarah is an Associate Editor for Jurimetrics and a fellow at the McCarthy Institute.
I. INTRODUCTION
Matal v. Tam is a landmark decision by the United States Supreme Court that redefined the relationship between trademark law and the First Amendment.[1] This case focused on the constitutionality of Section 2(a) of the Lanham Act, which prohibited registration of trademarks deemed “disparaging” to individuals or groups.[2] The Supreme Court invalidated this provision on the grounds of the First Amendment, marking a shift in the government’s ability to regulate speech within the context of intellectual property.[3]
Simon Tam, the lead singer of The Slants, an Asian-American rock band, sought to register the band’s name as a federal trademark.[4] The United States Patent and Trademark Office (USPTO) denied the application under Section 2(a) of the Lanham Act, which prohibited the registration of marks that “may disparage” any person, group, or institution.[5] The USPTO argued that the name The Slants was offensive to people of Asian descent.[6]
Tam, however, contended that the name was intended to be a reclamation of a derogatory term.[7] He argued that the refusal to grant the trademark violated his First Amendment rights, as the Lanham Act was an unconstitutional restriction on free speech.[8]
II. THE COURT’S RULING AND REASONING
In a unanimous opinion by Justice Alito, the Supreme Court found that the disparagement clause of the Lanham Act was a violation of the First Amendment.[9] The Court held that trademarks are a form of private expression and that the government cannot deny registration based on disparagement.[10]
The Court focused on the constitutional principle of viewpoint neutrality, focusing on how the government may not suppress speech even if it is deemed offensive.[11] The Court found that the disparagement clause constituted impermissible viewpoint discrimination, as it allowed the government to refuse registration based on subjective judgments about the offensiveness of a trademark.[12]
The majority opinion distinguished between commercial speech and other forms of expression, finding that trademarks are a form of expression that are protected by the First Amendment.[13] The decision reinforced the notion that the government cannot regulate trademarks based on their content unless such regulation serves a significant government interest and is narrowly tailored to achieve that interest.[14]
III. IMPLICATIONS FOR TRADEMARK LAW
Matal v. Tam has several positive and negative implications for the future of trademark law and its intersection with free speech. The Court’s decision emphasizes that the government cannot regulate speech based on its viewpoint, as the disparagement clause was deemed an unconstitutional form of viewpoint discrimination.[15] This ruling fundamentally alters the landscape of trademark law by limiting the extent to which the government can engage in content-based regulation of trademarks.
- Impact on Minority Reclamation of Derogatory Terms
One of the impacts the Court anticipated from Matal v. Tam was the possibility to enable the reclamation of derogatory terms by marginalized or minority groups.[16] The Court’s ruling allowed marginalized groups to reappropriate such terms through trademarks, a form of cultural expression that had previously been suppressed by the disparagement clause. This redefinition of language through intellectual property law opens new avenues for minority groups to express and reclaim their identities.
While Matal v. Tam’s decision may open opportunities for minority groups to reclaim derogatory terms, it also has challenges. Allowing the registration of offensive terms could inadvertently normalize harmful language and perpetuate negative stereotypes. The decision may lead to the increased trademarking of slurs or offensive expressions that are harmful or offensive to certain communities. This tension between free speech and the potential for harm remains and can pose a significant challenge for trademark law.
- Future Challenges to Controversial Trademarks
While the Matal v. Tam decision provides broader protection for trademarks based on free speech, it does not imply an unrestricted right to register any mark. The ruling does not preclude the USPTO from denying registration on other grounds, such as fraud, confusion, or immorality, but it does prevent the government from denying marks solely on the grounds of disparagement.[17]
IV. CONCLUSION
Matal v. Tam is a landmark case in understanding the intersection of trademark law and constitutional free speech protections. The Court expanded the scope of free speech and opened new pathways for marginalized communities to reclaim derogatory terms through the lens of intellectual property.
However, this ruling also brings significant concerns regarding the potential for derogatory or harmful terms to be trademarked and commercially exploited. While the decision was structured to strengthen free expression, it also creates an environment where terms historically used to degrade, insult, or harm certain groups could gain legal protection. This could lead to the normalization of offensive language in commercial settings, potentially exacerbating societal divisions and further entrenching negative stereotypes.
This decision clarifies the relationship between commercial and free speech, signaling a shift toward greater protection for expressive conduct within intellectual property. Moving forward, Matal v. Tam will undoubtedly shape future trademark disputes and define the balance between government regulation and individual rights to free expression in the context of intellectual property.
[1] Matal v. Tam, 137 S. Ct. 1744 (2017).
[2] 15 U.S.C. § 1052(a) (2018).
[3] 137 S. Ct. at 1755.
[4] Id. at 1747.
[5] Id. at 1753.
[6] Id. at 1754.
[7] Id.
[8] Id at 1757.
[9] Id. at 1751.
[10] Id. at 1744.
[11] Id. at 1748.
[12] Id. at 1749.
[13] Id.
[14] Id.
[15] Lisa P. Ramsey, Free Speech Challenges to Trademark Law After Matal v. Tam, 56 Hous. L. Rev. 401 (2018), https://houstonlawreview.org/article/6779-free-speech-challenges-to-trademark-law-after-i-matal-v-tam-i.
[16] 137 S. Ct. at 1744.
[17] Gary Myers, Trademarks & The First Amendment After Matal v. Tam, 26 J. Intell. Prop. L. 67 (2019), https://digitalcommons.law.uga.edu/jipl/vol26/iss1/3/.
Artificial intelligence was used by author to edit this piece.