WASHINGTON, DC — Rejecting an attempt by the government to censor trademark names that might cause offense, a unanimous U.S. Supreme Court has ruled in Matal v. Tam that even speech that some find offensive is protected by the First Amendment. In striking down a federal trademark statute that allowed the government to reject trademark applications for names it considered insulting to persons or groups, the Court reasoned that “trademarks are private, not government, speech,” and should therefore “not be banned on the ground that it expresses ideas that offend.”
The Rutherford Institute filed an amicus brief in the case on behalf of “The Slants,” an Asian-American dance rock band whose trademark application was rejected by the U.S. Patent and Trademark Office (PTO) on the grounds that it might disparage or offend persons of Asian heritage. The Court’s ruling is expected to impact a similar legal challenge mounted by the Washington Redskins football team, whose trademark protection was revoked by the PTO under the same federal statute.
The SCOTUS opinion and The Rutherford Institute’s amicus brief in Matal v. Tam are available at www.rutherford.org. Affiliate attorneys Megan L. Brown, Joshua Turner, Christopher Kelly, Dwayne D. Sam and John T. Lin of Wiley Rein LLP assisted The Rutherford Institute in advancing the arguments in Tam.
“Whether the debate is over a trademark for The Slants or the Redskins, the sticking point remains the same: how much do we really value the First Amendment, and how far are we willing to go to protect someone else’s freedom of speech, even if that speech might be offensive to some?” asked constitutional attorney John W. Whitehead, president of The Rutherford Institute and author of Battlefield America: The War on the American People. “Whatever the rationale for criminalizing speech, the end result remains the same: outright censorship and the creation of a class system that renders speech perceived as politically incorrect, hateful or offensive as inferior and less entitled to the full protection of the law.”
Simon Shiao Tam is the front man for an Asian-American dance rock band called “The Slants.” Tam, who is of Asian descent and heritage, has previously stated that the reason the name was chosen for the band was that he and the other members wanted to “take on” the stereotypes of Asians and “own them”; the band is proud of their Asian heritage and does not want to hide it from the public. Tam also has indicated that the response he has received to the band’s name from the Asian community has been very positive. Nonetheless, when Tam applied with the PTO to have “The Slants” registered as a trademark, the application was denied under a provision of the federal statutes which allows the PTO to refuse to register a trademark that “[c]onsists of or comprises 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.” Tam appealed the decision, arguing that the statute violated the First Amendment because it discriminated against expression on the basis of the viewpoint of the speaker and was unduly vague.
In December 2015, the U.S. Court of Appeals for the Federal Circuit ruled the statute to be unconstitutional, finding that the government had offered no legitimate interests justifying such regulation of commercial speech. In June 2017, the Supreme Court affirmed the Appeals Court’s ruling, striking down the disparagement clause for violating the free speech rights guaranteed by the First Amendment.