Matal v. Tam

On Monday, June 19, 2017, the Supreme Court held that the law prohibiting the federal registration of disparaging trademarks, part of Section 2(a) of the Lanham Act, was unconstitutional as viewpoint discrimination prohibited by the First Amendment guarantee of freedom of speech. Matal v. Tam, https://www.supremecourt.gov/opinions/slipopinion/16 The Court ruled 8-0 on the result and 8-0 on the theory of viewpoint discrimination, but split on a number of other issues considered by the Court.  The social justice implications of this decision fall along several lines.

First, those who seek to "reclaim" disparaging words like "dykes" and "slants" will be able to use federally registered trademarks in support of their efforts to do so. This is empowering to such advocates. While some advocates of such "reclamation" strategies may find the Tam decision empowering, some other social justice advocates have raised competing concerns.

Second, the federal government will no longer be able to reject trademarks because they disparage a group or person. Trademarks like, STOP THE ISLAMISATION OF AMERICA, which the Federal Circuit (“CAFC”) previously affirmed a refusal to register the mark because it disparaged the Muslim community.  Those with power and money are most likely to be able to exploit this change thereby further legitimating disparaging discourse not just in general, but also in the marketplace.

Third, the Court continues to support hate speech while ignoring the adverse impacts of it even in a quintessential commercial type of speech like trademarks.

Fourth, the implications of the Court's continuing shift toward formulaic evaluations of subtle freedom of expression issues signaled both in Reed v. Town of Gilbert from 2015 and in this case are troubling insofar as it results in more rigid rules with less room for balancing legitimate, strong, and even compelling interests against the extremely important, but not unlimited, right of freedom of expression.

Now that the disparagement provision has been struck down by the Supreme Court, we hope that Congress will work on a new version that can pass constitutional muster.

Many are also wondering how much of Section 2(a) of the Trademark statute, which also includes a ban on trademarks that are immoral or scandalous, will survive this decision.  A decision from the CAFC may answer this question in the suspended case
In re Brunetti, which appeals the TTAB decision affirming a refusal of FUCT under the scandalousness provision of the statute.

And we plan to continue the debate as well.  We expect to have a lively panel discussion on this topic at our 2018 CLE program.  And our own Professor Steven Jamar, who serves as the Institute’s Associate Director for International Programs, is currently preparing a journal article on the decision.

Below we have included links to recent articles further discussing the decision.  And we invite you to post comments and questions on our
Facebook page.

IIPSJ

Articles of interest on Matal v. Tam


https://www.forbes.com/sites/rogergroves/2017/06/20/supreme-court-ruling-is-not-the-savior-for-the-washington-redskins/2/#12432da85515

https://ucsocialjustice.com/2017/06/23/supreme-court-offensive-speech-may-be-trademarked/#more-2883

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