Matal v. Tam
137 S. Ct. 1744 (2017)
Authored by Patrick Eagan-Van Meter
Statement of Facts: In 2011, Simon Tam filed an application to register a trademark on his band’s name, “The Slants.” U.S. Trademark Application Serial No. 85472044 (filed Nov. 14, 2011). In re Tam, 785 F. 3d 567 (Fed. Cir. 2015). An attorney at the U.S. Patent and Trademark Office (“USPTO”) rejected Tam’s application for attempting to register a mark containing material disparaging to persons of Asian descent. Matal v. Tam, 137 S. Ct. 1744, 1751 (2017). Section 2(a) of the Lanham Act bars the government from approving trademarks that include material “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a). Tam appealed this decision to the USPTO’s Trademark Trial and Appeal Board (“TTAB”). In his appeal, Tam cited his status as an Asian American and his lack of intent to disparage people of Asian descent, arguing his application was an attempt to reclaim a term previously used to insult them. Appeal Applicant’s Brief, Ex Parte Tam., No. 85472044, 2013 WL 6039240 (T.T.A.B. Feb. 19, 2013). While acknowledging the good intention underlying Tam’s use of the phrase, TTAB affirmed the USPTO attorney’s decision on the grounds that many Asian-Americans object to the term. In Re Tam, 108 U.S.P.Q. 2d 1305 (T.T.A.B. Sept. 26, 2013).
Procedural History: Tam appealed the TTAB decision to the Federal Circuit. A three-judge panel determined the record contained substantial evidence to support the TTAB’s decision that “The Slants” was offensive to people of Asian descent. Further, the panel found the Lanham Act bar to registering marks containing disparaging speech was not unconstitutionally vague. In re Tam, 785 F.3d 567 (Fed. Cir. 2015). However, a member of the Federal Circuit bench initiated a sua sponte request for a poll to rehear the case en banc, and the poll resulted in enough votes to empanel the entire circuit for a rehearing. In re Tam, 600 F. App’x 775 (Fed. Cir. 2015). The full panel reversed, finding the Lanham Act’s prohibition on approving offensive marks unconstitutional regardless of how disparaging the content is. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), as corrected (Feb. 11, 2016). The federal government petitioned for a writ of certiorari, which the Supreme Court granted. Lee v. Tam, 137 S. Ct. 30 (2016).
Question Presented: Does the Lanham Act’s disparagement clause violate the First Amendment?
Holding: Yes, § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment.
Reasoning: The Supreme Court unanimously held that § 2(a) of the Lanham Act is unconstitutional, but the justices’ reasoning varied. The majority opinion, authored by Justice Alito, found the disparagement clause constituted viewpoint discrimination and infringed the applicant’s First Amendment rights under an intermediate level of scrutiny. In reaching its conclusion, the majority began by holding that the review of disparagement content in the trademark approval process necessitates viewpoint discrimination. The Court dismissed arguments concerning the USPTO’s approval process as government speech, and did not reach the issue whether a trademark application is expressive or commercial speech.
The Lanham Act “evenhandedly prohibits disparagement of all groups,” applying to all races, political parties, and ideologies evenly. Matal, 137 S. Ct. at 1763. The opinion describes how marks containing potentially offensive material would be rejected whereas those with “happy-talk” receive approval. Id. at 1765. To the Court, a viewpoint does not lose its free speech protections simply for having offensive qualities. Id. at 1763 (“Giving offense is a viewpoint.”). This principle was established by the Supreme Court’s decision in Street v. New York, where the Court held that the public expression of ideas may not be prohibited simply because some people will find the ideas offensive. Street v. New York, 394 U.S. 576, 592 (“We have said time and again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.’”). The disparagement clause bluntly discriminates against offensive viewpoints in favor of inoffensive ones and therefore is unconstitutional. Matal, 137 S. Ct. at 1764-65 (“[T]he disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination.”).
While all justices agreed the disparagement clause constitutes viewpoint discrimination, they diverged on the reasoning. Consequently, the Court did not establish a specific framework for evaluating a First Amendment challenge to federal trademark provisions. But taking the opinions together, a law must at least survive the intermediate-scrutiny analysis from Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980). This decision established that trademark regulations are subject to a constitutional balancing test to see if the law is narrowly tailored to further a compelling or substantial government interest against the prospect the rule will harm free expression. Id. The Matal majority opinion held a broad freedom of expression was a more substantial interest than protecting underrepresented groups from demeaning messages. 137 S. Ct. at 1764 (quoting United States v. Schwimmer, 279 U.S. 644, 655 (1929) (Holmes, J., dissenting) (“Speech that demeans on the basis of race, ethnicity, gender religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”)). Next, Justice Alito on behalf of the plurality held that the disparagement clause’s restriction on “any trademark that disparages any person, group, or institution[,]” goes much further than preventing the discriminatory conduct it is supposed to prohibit. Matal, 137 S. Ct. at 1749 (emphasis in original).
Had the Court found that approved trademarks were government speech, the USPTO would not have an obligation to treat offensive and inoffensive trademarks equally. Government speech is not protected by the First Amendment. Id. at 1757. Unlike the government speech on license plates produced and distributed by states at issue in Walker v. Texas Division, Sons of Confederate Veterans, 135 S. Ct. 2239 (2015), the trademarks here are only registered by the federal government. The government “does not dream up these marks, and it does not edit marks submitted for registration.” Matal, 137 S. Ct. at 1758. Further, the USPTO must approve any application meeting the Lanham Act’s viewpoint neutral requirements. Id. The public does not view registration of a trademark to be a government endorsement of the message, and the USPTO “has made it clear that registration does not constitute approval of the mark.” Id. at 1758–59 (citing In re Old Glory Condom Corp., 26 USPQ 2d 1216, 1220, n. 3 (T.T.A.B. 1993)). The government also argued trademarks are government speech as the product of a government sponsored program that provides a forum for private speech. Justice Alito rejected this assertion on the grounds that government programs to promote private speech are still required to be viewpoint neutral. Matal, 137 S. Ct. at 1763.
Concurrences: Concurring in the decision, Justice Kennedy, along with Justices Ginsburg, Sotomayor, and Kagan, who concurred in part and concurred in the judgement, suggested an even more stringent review should apply to the disparagement clause. The opinion focused on the significant harm to minority viewpoint where the process singles out some messages for less favorable treatment based on the views expressed, and suggested strict scrutiny may apply to this type of review. Id. at 1767 (“[T]he viewpoint based discrimination at issue here necessarily invokes heightened scrutiny.”). Rejection of an application on disparagement grounds “reflects the government’s disapproval of the subset of messages it finds offensive.” Id. at 1766.
Diverging from the majority, Justice Kennedy opined that by funding the trademark program, the government has an affirmative obligation to “encourage a diversity of views from private speakers.” Id. at 1769. Preventing certain private speech from a government sponsored platform only on the grounds that it is distasteful to a portion of the public would be discrimination. Id. (“[O]ur cases are clear that viewpoint discrimination is not permitted where, as here, the Government expends funds to encourage a diversity of views from private speakers.”) (internal quotations and citations omitted). Justice Kennedy’s opinion explains the First Amendment is not reliant on “government benevolence[,]” rather it is a protected right of the people, to prevent those in power from silencing dissenting minority views. Id. Justice Thomas also concurred on the standard of review. His opinion asserted that strict scrutiny should always apply to any law restricting truthful speech based on its content, regardless if the speech can be characterized as commercial. Id.