June 21, 2017

On June 19, 2017, the Supreme Court unanimously held in Matal v. Tam that a decades-old statute prohibiting the registration of disparaging trademarks violates the First Amendment to the U.S. Constitution.  The Court concluded that, because trademark registration is a mere administrative recognition of private speech rather than government speech, the registration process must be viewpoint-neutral.  Gibson Dunn filed a brief in the case on behalf of the United States Chamber of Commerce as amicus curiae, urging the conclusion that the Court reached.

*          *          *

The Tam case arose from a decision of the United States Patent and Trademark Office ("PTO") to refuse registration of a trademark for "THE SLANTS," the name of an Asian-American rock band.  The PTO relied on a provision of the Lanham Act prohibiting the registration of trademarks that "may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."  15 U.S.C. § 1052(a).  Applying the PTO's framework for disparagement, the examining attorney concluded that "THE SLANTS" was likely to disparage a significant number of Asian Americans.

On appeal, the U.S. Court of Appeals for the Federal Circuit found that the Lanham Act's disparagement clause was facially unconstitutional under the Free Speech Clause of the First Amendment.  The Supreme Court agreed, though several Justices expressed a difference of opinion as to the reasoning. 

Justice Alito announced the judgment of the Court, which was unanimous with respect to the conclusion that, despite the role of government in the registration process, trademarks constitute private rather than government speech.  The Court reasoned that the government merely registers the contents of others' trademarks; it "does not dream up these marks," "it does not edit marks submitted for registration," and the PTO has made clear in the past that registration does not constitute government approval of a particular mark.  It also found that prior Supreme Court precedents fail to support trademark registration as a form of government speech.  Trademarks are vastly different from, for example, speech used to convey a government message—as was the case with selected monuments placed on governmental property in Pleasant Grove City v. Summum—and there is no evidence the public associates trademarks with the government itself—as was the case with specialty license plates in Walker v. Texas Division, Sons of Confederate Veterans.  Further backing away from Walker, which the Court noted "likely marks the outer bounds of the government-speech doctrine," the Court emphasized that government registrations in other, related contexts like copyright registration do not constitute government speech.[1]

Justice Alito went on to reject the remainder of the government's arguments, writing only for himself, Chief Justice Roberts, Justice Thomas, and Justice Breyer.  First, Justice Alito explained that trademark registration is not a form of government subsidy, which would permit the government to subsidize speech expressing a particular viewpoint while refusing to subsidize activities it does not wish to promote.  He also refused to create a new "government-program" doctrine for trademarks that would allow for some content- and speaker-based restrictions.  Finally, Justice Alito explained that it is unnecessary to decide whether the relaxed-scrutiny afforded commercial speech under the First Amendment applies here, because the disparagement clause is too broad to withstand even that lesser standard of review.

Justice Kennedy, in a separate opinion joined by Justices Ginsburg, Sotomayor and Kagan, emphasized in greater detail why the First Amendment protects "THE SLANTS" trademark from governmental disapproval of a viewpoint the government finds unacceptable.  He reasoned that the case involved viewpoint discrimination that warranted heightened scrutiny, without undertaking a commercial speech analysis as in Justice Alito's opinion.

Justice Thomas filed a short concurrence in part and in the judgment, reiterating his view that whenever the government seeks to restrict truthful speech in order to suppress the ideas conveyed, strict scrutiny applies.  Justice Gorsuch took no part in the consideration or the decision.

*          *          *

Tam's central holding—that the Lanham Act's disparagement clause is unconstitutional—is likely to have only a limited impact, as most trademarks are not accused of disparagement.  One company likely to benefit from the decision, however, is the Washington Redskins professional football team, which had seen several of its trademark registrations invalidated by the PTO under the same Lanham Act provision.  The Supreme Court's decision resolves a split on the constitutionality of the statute between the approach of the Federal Circuit in the Tam case and that of the U.S. District Court for the Eastern District of Virginia in the Washington Redskins case, Blackhorse v. Pro-Football, Inc.

More broadly, the Supreme Court's unanimous government-speech ruling suggests that it is poised to cabin what is considered to be government speech in the context of government registration and regulation.   The Court explicitly warned that courts "must exercise great caution before extending" government-speech rules to messages that originate from private parties.  And the Justices' emphasis on viewpoint-neutrality as it relates to the government suggests that the Court is unlikely to extend the government speech doctrine any time in the near future. 


   [1]   In a portion of the opinion in which only Justice Thomas abstained, Justice Alito also wrote for the majority in concluding that the term, "persons," in the Lanham Act's disparagement clause was meant to prohibit registration of marks that disparage members of a racial or ethnic group.  


Gibson Dunn's lawyers are available to assist in addressing any questions you may have regarding these developments.  Please contact the Gibson Dunn lawyer with whom you usually work, or the authors:

Howard S. Hogan - Washington, D.C. (+1 202-887-3640, hhogan@gibsondunn.com)
Michael R. Huston - Washington, D.C. (+1 202-887-3793, mhuston@gibsondunn.com)
Christine Demana - Dallas (+1 214-698-3246, cdemana@gibsondunn.com)
Rachel Y. Wade - Dallas (+1 214-698-3273, rwade@gibsondunn.com)

Please also feel free to contact the following practice group leaders: 

Intellectual Property Group:
Josh Krevitt - New York (+1 212-351-4000, jkrevitt@gibsondunn.com)
Wayne Barsky - Los Angeles (+1 310-552-8500, wbarsky@gibsondunn.com)
Mark Reiter - Dallas (+1 214-698-3100, mreiter@gibsondunn.com)

Appellate and Constitutional Law Group:
Mark A. Perry - Washington, D.C. (+1 202-887-3667, mperry@gibsondunn.com)
James C. Ho - Dallas (+1 214-698-3264, jho@gibsondunn.com)
Caitlin J. Halligan - New York (+1 212-351-4000, challigan@gibsondunn.com)

Fashion, Retail and Consumer Products Group:
David M. Wilf  - New York (+1 212-351-4027, dwilf@gibsondunn.com)
Howard S. Hogan - Washington, D.C. (+1 202-887-3640, hhogan@gibsondunn.com)

Media, Entertainment & Technology Group:
Ruth E. Fisher - Los Angeles (+1 310-557-8057, rfisher@gibsondunn.com)
Scott A. Edelman - Los Angeles (+1 310-557-8061, sedelman@gibsondunn.com)
Orin Snyder- New York (+1 212-351-2400, osnyder@gibsondunn.com)

Sports Law Group:
Andrew S. Tulumello - Washington, D.C. (+1 202-955-8657, atulumello@gibsondunn.com)
Maurice M. Suh - Los Angeles (+1 213-229-7260, msuh@gibsondunn.com)
Richard J. Birns - New York (+1 212-351-4032, rbirns@gibsondunn.com)

   

© 2017 Gibson, Dunn & Crutcher LLP

Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.