First Amendment Wins in Trademark Law

This morning, the U.S. Supreme Court decided the closely watched Matal v. Tam trademark disparagement case. The Court decided unananimously (8-0, heard before Justice Gorsuch joined the Court) to allow the trademark to be registered. Interestingly, while the Justices all agreed the trademark law’s disparagement clause was unconstitutional (and struck it down), the Justices were divided on why the disparagement clause was unconstitutional (some said free speech violation, some said viewpoint discrimination).

Federal trademark law (called the Lanham Act) grants nationwide protection to marks (logos, phrases, slogans, etc) as continuously “used in commerce” by a person, nonprofit, or business (15 U. S. C. §1051(a)(1)). Part of the trademark application process is getting the mark approved by the U.S. Patent & Trademark Office in Washington, D.C. Most of the approval/vetting process is being sure the mark hasn’t already been claimed or used by someone else in the same context (that it’s not prior art), in a way that would be confusing to the average person or consumer.

One of the criteria, since 1946 when the Lanham Act was born, had been non-disparagement clause: a mark could promote one person or business’ advantages or virtue, but couldn’t (1) “disparage” a “person, living or dead, [an] institution [or business], belief, or national symbol” or (2) “bring them into contempt, or disrepute.” (15 U. S. C. §1052(a)).

Enter the Tam case. A rock band with Asian-American musicians wanted to trademark a name that was a racial/ethnic slur for people of Asian or Asian-American ancestry, even though the band sought to embrace the name as their own and hoped to turn it into a positive image or connotation. The Trademark Office denied the trademark application on disparagement grounds – the name was a racial or ethnic slur, so the band couldn’t trademark it. The band took its case all the way to the Supreme Court, and won. Time will tell how Tam will affect other cases, like the Trademark Office’s cancellation of the Washington Redskins football team’s trademark, or others.

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on trademark on entertainment law/copyright issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, film owners, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your trademark or entertainment law, questions, please call (913-707-9220) or email ( to schedule a free, convenient consultation.

(c) 2017, Stephen M. Johnson, Esq.

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