Supreme Court Says Prohibition on Registration of Disparaging Trademarks Unconstitutional

Registered trademarks give your startup the ability to build a unique brand and keep it protected from other companies.

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the goods of your startup from those of others. For example, when you visit a McDonald’s, you have a good idea what they have on the menu before you even open the front door: the Big Mac®, Filet-O-Fish®, and Egg McMuffin®. These sandwiches have trademark protection which keeps other restaurants from using the names, promotes the McDonald’s brand, and distinguishes them from the competition.

A registered trademark never expires provided you continue to use it. Trademarks don’t have the rigid filing deadlines of patents; nonetheless, a startup should begin working with an IP attorney right away.

In the past, the use of “disparaging” trademarks was prohibited; however, a recent court case has changed that law. This may be important for startups as they consider their trademarks and overall IP strategy.

Supreme Court Ruling

Recently, the United States Supreme Court unanimously decided in Matal v. Tam that a federal law prohibiting the registration of “disparaging” trademarks violates the First Amendment Free Speech Clause because the law discriminates based on viewpoint. The decision gave Asian-American musician Simon Tam the right to register the name of his band, THE SLANTS…it also means that the widely publicized debate over the Washington Redskins Football Club’s trademark will likely end with the owners avoiding the cancellation of their registered REDSKINS marks.

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), prohibits the registration of marks “which may disparage … persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.” Based on that law, the U.S. Patent and Trademark Office (USPTO) denied Mr. Tam a federal trademark registration for his band because it was disparaging to Asian-Americans. Mr. Tam argued that his mark wasn’t offensive, rather empowering, as he reclaimed it to make a statement against Asian stereotypes. Both the USPTO and its Trademark Trial and Appeal Board said no, citing the disparagement clause and the fact that “slants” was disparaging to Asians even though Mr. Tam was using the term in a positive way. The musician appealed to the U.S. Court of Appeals for the Federal Circuit, which found the disparagement clause unconstitutional under the First Amendment. The Government petitioned for review by the U.S. Supreme Court to decide the constitutionality of the disparagement clause.

The Supreme Court found that the disparagement clause amounted to “viewpoint discrimination” in violation of the First Amendment. In his opinion, Justice Samuel Alito wrote:

To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of the every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.

Although the Supreme Court’s decision was based on Tam’s challenge to the disparagement clause, that law could mean cancellation for the Redskins’ federal registrations. The Fourth Circuit suspended the Redskins’ appeal of a decision cancelling its registrations as disparaging until the Supreme Court made a decision on the constitutionality of the law. From the ruling in Tam, it looks as though the Redskins’ registrations won’t be canceled.

Startups Take Note

As you consider your startup IP strategy, note that the Tam decision may also usher in other First Amendment challenges to the Lanham Act. The section of the Lanham Act that prohibited registration of disparaging marks also prohibits registrations of marks that are “immoral” or “scandalous.” Although those provisions of the law weren’t specifically addressed in the Tam case, they’re likely to be deemed unconstitutional and violative of the First Amendment.

Summary

Depending on the type of business and industry in which your startup will be operating, you should consider trademark protection as part of your intellectual property strategy. Speak with an experienced intellectual property legal professional as you work to build your startup to discuss the types of intellectual property protection you may need.

Attorney Michael Ahmadshahi focuses on patents, intellectual property, copyright, and trade secrets in Irvine, California. The Michael Ahmadshahi, PhD, Law Offices are also located in Beverly Hills and Sherman Oaks. Call us toll free at (800) 747-6081 or direct at (949) 556-8800 or email info@mmaiplaw.com and let us help you with your intellectual property questions and the IP strategy for your startup.

Michael Ahmadshahi

Mr. Ahmadshahi’s area of practice is Intellectual Property Laws including Patent Prosecution and Litigation, Trademarks, Copyrights, Unfair Business Practices, and Business Litigation. He is also an entrepreneur and an inventor.