Supreme Court Rules Overwhelmingly To Strike Down 'Disparagement Clause' Used To Bar Offensive Trademarks
Tuesday June 20, 2017
The U.S. Supreme Court handed down a major victory for free speech on Monday in striking down a provision of the Lanham Act that barred registration for “disparaging” trademarks. The decision came in Matal v. Tam, a case that we have been following. I have previously written about my disagreement with the U.S. Patent and Trademark Office decision to rescind federal trademark protections for the Redskins as a racially disparaging name. As predicted, the ruling answered the question raised in the prior column in controversies like the denying of trademark protection to the Washington Redskins. The decision is good news for Washington’s NFL team, which lost its trademark because its name is disparaging to Native Americans.
Tam is the “front man” for the Asian-American rock band The Slants and, in 2010, filed an application seeking to register the mark THE SLANTS. Tam’s group called itself the Slants because it wanted to “reclaim” and “take ownership” of stereotypes about Asians.
The Lanham Act provision, known as the “disparagement clause,” bans the registration of a trademark that may disparage “persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” I have been highly critical of the provision for years in both columns and testimony before Congress. Now it is gone but I remain perplexed how Congress failed to act on the matter to protect free speech for so many years. One obvious reason is that many legislators lined up praising the denial of trademarks as entirely proper.
House Minority Leader Nancy Pelosi celebrated the denial of the trademark, which clearly contravened free speech protections. Sen. Harry Reid not only praised the action but predicted that the Redskins name would be gone within three years. That was in 2014. Democratic Senator Maria Cantwell said, “We’re so excited to know that finally people are recognizing that this issue can no longer be a business case for the NFL to use this patent.”