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Supreme Court Ruling Trademark Disparagement

Supreme Court Ruling on Trademark Disparagement: Affirming Free Speech Rights

Lindokuhle Mkhize

Lindokuhle Mkhize

15 December 20232 min read

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Supreme Court ruling, trademark disparagement

The Supreme Court's ruling on Matal v Tam, a case involving the question of whether or not a disparagement clause in trademark law was constitutional, serves as an essential landmark decision that helps define both free speech and intellectual property rights. This precedent set by the court has been used widely when debating issues that intersect with those two topics.

The landmark case: Matal v Tam

Matal v Tam is a landmark case within the realm of intellectual property law, and at its core, it was an affirmation by the Supreme Court that free speech must be respected above any attempt to limit potentially offensive trademarks.

The “disparagement clause” outlined in the Lanham Act (a federal trademark registration statute established in 1946) had come under scrutiny as being unconstitutional and thus invalidated on these grounds. This critical decision has emphasized individual rights over restrictions intended for safeguarding purposes but infringing on personal expression.

Background of Matal v Tam

Simon Tam is the lead singer of an Asian-American rock band called “The Slants." His experiences provided impetus to this story, and his motive behind choosing such a name for the group was to overcome what could be seen as its negative connotations by turning it into a symbol of strength. 

When trying to register their name as a trademark under the Lanham Act's disparagement clause, they were refused by an Examining Attorney. This resulted in them taking legal action up until the Supreme Court case Matal v Tam. Here the Federal Circuit Court previously deemed that clause unconstitutional, yet needed confirmation from a higher power. Subsequently, the federal highest court struck down this topic altogether, ultimately settling matters.

In the legal challenge, Simon Tam asserted that the Disparagement Clause of the Lanham Act went against free speech protected under the First Amendment. The government claimed this clause only applied to degrading marks concerning particular racial or ethnic groups. 

Subsequently, the Federal Circuit concurred with Tam. It declared such disparagement policy unconstitutional due to being contrary to free speech principles mandated by the First Amendment. This judgment enabled the case's advancement up until the Supreme Court ruling. Ultimately, this resulted in a milestone for trademark law for freedom of speech.

In the Matal v Tam case, Justice Kennedy and Thomas both wrote separate concurring opinions that spoke to the importance of free speech and emphasized how narrow government speech exceptions should be. 

The opinion written by Justice Kennedy placed an emphasis on defending private expression since any laws restricting one's viewpoint based on religion or such would face strict scrutiny due to First Amendment implications. On the other hand, Justice Thomas discussed protecting commercial speech while citing the Lanham Act in his judicial interpretation when needed.

Implications for trademark law and free speech

The Supreme Court ruling in Matal v Tam has significantly affected trademark law and the First Amendment. The verdict implies that any defendants in a trademark case should contemplate invoking their rights under the First Amendment, especially concerning trademarks unrelated to potential consumer confusion or deceit.

The potential rise in controversial and provocative trademarks.

As time passes, it stands to reason that an increasing number of provocative trademarks will become part of our public domains – something allowed by law thanks to the case settled between The Slants (Matal) and The United States Government (Tam).


What did the U.S. Supreme Court rule in Matal v Tam?

In the landmark case of Matal v Tam (2017), the U.S. Supreme Court unanimously voted 8-0 to uphold free speech as protected by the First Amendment, deeming that a federal law forbidding trademarks seen as derogatory had violated this amendment protection.

What is the disparagement clause of the trademark?

Under the Lanham Act, marks that could be considered to insult persons, living or dead institutions, and their respective beliefs/ideas, as well as national symbols, cannot receive registration from the U.S. Patent & Trademark Office (USPTO). This is outlined in a regulation called “the disparagement clause.”

What was the decision in Lancu v Brunetti?

The Supreme Court declared the Lanham Act's prohibition of "immoral or scandalous" marks unconstitutional due to viewpoint discrimination in Lancu v. Brunetti, a decision that underscores its aversion towards any form of such violation.

What was the background to the Matal v Tam case?

The Matal v Tam case arose from a dispute between the band “The Slants”, led by Simon Tam, and the USPTO, which denied the band trademark registration due to the Lanham Act's disparagement clause.

How does the Supreme Court's decision impact future trademark disputes?

The Supreme Court's ruling in favor of the defendant in this trademark dispute has established a legal principle that promotes utilizing First Amendment defenses to challenge USPTO verdicts, setting the stage for how similar cases may be handled moving forward.

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Lindokuhle Mkhize, a skilled creative copywriter and content lead at Trademarkia, brings a wealth of experience in driving innovation and managing teams. With previous success in starting and growing the Innovation and Marketing department at her former creative agency, Lindokuhle boasts expertise in leadership and delivering compelling content. Based in South Africa, Lindokuhle's work focuses on key themes of creativity, effective communication, and strategic marketing.