Episode 30: Matal v. Tam: Prohibition of Offensive Marks Based On Disparagement Clause Is Unconstitutional Under the First Amendment
Former Online Editor Anthony Zangrillo and Former Senior Notes and Articles Editor Joey Gerber take a break from BAR prep in order to discuss “one of the most important First Amendment free speech cases to come along in many years” Matal v. Tam.1
In the past, the U.S. Patent and Trademark Office (PTO) has refused to register trademarks considered that disparage a particular person, group or institution. On June 19, the Supreme Court unanimously held (8-0) that the disparagement clause (Section 2(a) of the Lanham Act), is an unconstitutional violation of the First Amendment’s Free Speech Clause.
The specific case in controversy involved a Portland, Oregon, rock band “The Slants.” All the members of the band are of Asian decent and the name represents a move of empowerment in reclaiming a historically derogatory term. Simon Tam filed a trademark application to federally register the band’s name, “The Slants.” The PTO refused to register the mark as “derogatory or offensive” based on the dictionary meaning of ‘slants’ or ‘slant-eyes.’ Tam lost an appeal to the PTO’s Trademark Trial and Appeal Board (TTAB), but this ruling was reversed in the Court of Appeals for the Federal Circuit, holding that the disparagement clause is unconstitutional under the Free Speech Clause.
On this podcast, Anthony and Joey discuss the Supreme Court decision and the ramifications this could have on future trademark applications, as well as other decisions such as the recent controversy over the Washington Redskins.2
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