The unconstitutionality of prohibiting Disparaging Trademarks

By Ferraiuoli LLC

On June 19, 2017, the Supreme Court of the United States held that the Lanham Act’s disparagement clause is unconstitutional under the First Amendment’s Free Speech Clause. The disparagement clause prohibited registration of marks that consist of or comprise immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. The Court found that an examiner may not reject a mark based on the viewpoint that it appears to express, as trademarks are private, not government, speech.

The Supreme Court affirmed the Federal Circuit’s en banc decision, after the applicant’s registration of the “The Slants” mark was denied by the Patent and Trademark Office (PTO) and an unsuccessful administrative appeal process. The PTO’s denial of the registration was based on the fact that “slant” is a derogatory term used to refer to people of Asian descent, and that even when the applicant is a member of the “disparaged” group or has good intentions underlying the use of the term, a substantial part of the “disparaged” group may find the term offensive. The applicant in this case is a person of Asian descent, who wanted to “reclaim” the term in order to debilitate it as a racial slur.

The purpose of marks is to aid consumers in associating a product or service with its source. As the Court states, trademarks do not convey a Government message, and their registration does not lead the public to believe an association with the Government exists. The First Amendment scrutiny does not apply to Government speech, as the Government has to take and reject particular viewpoints to be able to properly function. Treating trademarks in the same way as Government speech would constitute viewpoint discrimination, as it would be favoring some ideas at the expense of others. This discrimination, the Court explains, is “a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny,” a scrutiny which the Lanham Act’s disparagement clause does not survive.

This decision strikes down a highly subjective requirement for marks to be registered under the PTO. As such, a mark can now be registered regardless of how offensive it is considered, making consumers, and not the Government, the ones with the power to decide which brands (and viewpoints) to support.

Given the significant impact that this decision has on trademark prosecution, we believe that this development may interest you. This document, however, has been prepared for information purposes only and is not intended, and should not be relied upon, as legal advice. To further discuss or obtain additional information on how these changes to the legal landscape may impact your operations, please feel free to contact us at your convenience.