U.S. Supreme Court Rules Anti-disparagement Clause of Lanham Act Violates Free Speech Clause of the First Amendment

On June 19 , 2017, the U.S. Supreme Court in Matal v. Tam, 137 S. Ct. 1744, ruled the anti-disparagement clause under section 2(a) of the Lanham Act violates the Free Speech Clause of the First Amendment and is therefore invalid, affirming the decision of the Court of Appeals for the Federal Circuit. Prior to this decision, the anti-disparagement clause permitted refusal of registrations of trademarks that might disparage or bring into contempt or disrepute any persons, living or dead, institutions, beliefs, or national symbols. In 2011, Simon Tam, the leader of an Asian-American rock band known as “The Slants,” filed a trademark application for the mark “THE SLANTS.” The USPTO had refused registration of the mark under section 2(a) of the Lanham Act. The band’s position was that the trademark application was not filed for a derogatory purpose, but rather to eliminate the derogatory impact of the term and to reclaim a phrase that was widely used as an ethnic slur. As a result of this decision, the USPTO will no longer be able to deny trademark registration on the ground of disparagement. Also, anti-disparagement clauses in state trademark laws will no longer be enforceable. The effects of this Supreme Court decision were almost immediate — on June 29, 2017, in a totally separate case, the Justice Department in a letter to the Court of Appeals for the Fourth Circuit, wrote that the Court should reverse the judgment of the district court and remand the case with instructions to enter a judgment in favor of Pro-Football. Thus, the long-standing fight begun by a group of American Indian activists, to cancel six trademark registrations of the pro-football team Washington Redskins, which comprised in whole or in part the term “REDSKINS” has essentially ended.