Supreme Court says disparagement clause violates the First Amendment Free Speech Clause

By Gene Quinn
June 19, 2017

Earlier this morning the United States Supreme Court delivered a much-anticipated decision in Matal v. Tam, the trademark case that asks whether a disparaging trademark can be federally registered. The Court explained that the disparagement clause violates the free speech clause of the First Amendment of the U.S. Constitution.

The Lanham Act, the statute that sets forth U.S. trademark laws, has certain provisions that explain under what circumstances a trademark cannot be federally registered. For example, if a trademark is merely descriptive, or if a trademark is deceptively misdescriptive, the trademark may not be federally registered. At issue in Tam was the provision that prevents disparaging trademarks from being federally registered.

The petitioner, Tam, wished to register the trademark THE SLANTS for association with is rock band. The United States Patent and Trademark Office refused the registration, but the Federal Circuit ruled that the disparagement provisions – what the Supreme Court referred to as the disparagement clause – violates the First Amendment to the United States Constitution.

The Supreme Court first determined that the disparagement clause applies to trademarks that disparage the members of a racial or ethnic group, which meant that it was indeed necessary to determine whether the clause violates the Free Speech Clause of the First Amendment.

The government raised three specific arguments: (1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine.

Under the government speech doctrine the government does not itself need to maintain content neutrality when it embarks upon a policy or program. Justice Alito, writing for the Court, explained that it would be an extraordinary extension of the government speech doctrine to hold that “a trademark converts the mark into government speech.” As Justice Alito explained: “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.”

The Supreme Court easily determined: “Trademarks are private, not government, speech.”

The Supreme Court had little difficulty dismissing the government’s rather ridiculous argument that a trademark is a government subsidy. For example, Justice Alito pointed out that payments are made to the government from applicants for a trademark. Furthermore, Alito pointed out that the Federal Circuit has concluded that these fees paid by trademark applicants have fully supported the registration system for the past 27 years. Therefore, there is no subsidy from the government but a payment from the applicant to the government.

With respect to the final government argument, the Supreme Court pointed out that they have over and over again explained that viewpoints cannot be prohibited because they are offensive. The Court then explained that the government argument for this new category of permissible speech restriction is really just a combination of the government speech doctrine together with the subsidy argument with several union dues case theories sprinkled therein.

The Supreme Court concluded on this creative third government argument: “[T]he disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.”

Finally, the Supreme Court rejected the theory that disparaging trademarks can be prohibited under the commercial speech doctrine, finding the clause far to broad. The Supreme Court explained:

A simple answer to this argument is that the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.

The clause is far too broad in other ways as well. The clause protects every person living or dead as well as every institution.

This decision will have important implications for the Washington Redskins trademark case. Stay tuned for more analysis on this important trademark and First Amendment case.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 37 Comments comments.

  1. IPdude June 19, 2017 12:41 pm

    Gene – given SCOTUS has now affirmatively declared trademarks to be private speech, do you feel this ruling is a foreshadowing on how they may characterize patents in Oil States?

  2. Valuationguy June 19, 2017 1:27 pm

    I’ll chime in to say that the question in the Oil States case is totally unrelated to the Free Speech issue encased in the Tam case. While the gov’t was advancing the argument that a trademark was “gov’t speech”…which tangentially is related to the public v. private debate….it wasn’t a major issue like it will be in the Oil States case.

    Tam didn’t revolve around the key due process issue that Oil States does…and the artificial edifice that the court system has created to justify the current administrative state is VERY dependent on the “public v private property as a result of the regulatory scheme” debate (not to mention the Chevron deference issue that is being taken up in the other major patent case the SCOTUS is going to decide shortly).

  3. Ray June 19, 2017 1:49 pm

    I don’t see how Chevron has anything to do with the Oil States issue. The AIA was passed by Congress – it is not something created by an agency.

    Also, the Oil States case isn’t a due process taking case – it’s a 7th AM case.

  4. EG June 19, 2017 1:57 pm

    Hey Gene,

    Hail to the Redskins! I am and shall forever remain a diehard Washington Redskin fan.

  5. Alex in Chicago June 19, 2017 2:09 pm

    A simple and just result. If Tam had not prevailed, your local government could refuse to record a deed if you had a Trump sign in your yard, or refuse to give you a liquor license for having a Bernie sticker in the window.

  6. Gene Quinn June 19, 2017 2:17 pm

    IPdude-

    Trademarks being private speech and not public speech isn’t the same issue as patents being public rights versus private rights. Having said that, it is certainly interesting and potentially instructive about how they might view the patent question. Trademarks are intended to protect the public, but there is no doubt that they are extremely valuable property rights. I do expect much to be made about that line in the decision, I expect it will be significantly overblown, but I also don’t think it is irrelevant at least with respect to the state of mind of the Judges. But will they view patents the same way?

  7. Anon2 June 19, 2017 2:26 pm

    Freedom of Commercial speech protected by SCOTUS under the constitution. It’s a nice little reminder that notwithstanding the efforts of the leftists to eradicate a free America, it still exists.

  8. Valuationguy June 19, 2017 4:07 pm

    I just read the decision and despite my comments above….I now see more relevance to the question…and want to adjust my answer.

    I found the following passage VERY RELEVANT to the Oil States lynchpin of patents being public vs private right.

    <>

    In another board I have argued that patent rights are actual property RIGHTs…not something conferred by gov’t…but property CONFIRMED (i.e. recognized) by gov’t….similar to trademarks here. The majority (which somewhat suprisingly includes Breyer…who will NOT support Oil States imo) make a large point of pointing out that “FEDERAL LAW doesn’t create trademarks” with supporting info as to why (i.e. ancient, common law, etc.)…..which patents have in common with trademarks.

    Also….regarding my comment about Chevron….that was in reference to a different SCOTUS case (not Oil States) ….but one that might get decided before the Oil States one.

  9. David June 19, 2017 4:51 pm

    Oil States isn’t a Seventh Amendment case. It’s an Article III case. The Seventh Amendment question is a distraction.

    @8: Federal law doesn’t create patents either. The Constitution creates patents. Just like the Constitution creates land patents.

    Can the federal government revoke a land patent?

    Why not?

  10. Edward Heller June 19, 2017 5:29 pm

    David, on the point about the Seventh Amendment, I could not disagree with you more. In fact, I daresay, you are ruining our case.

  11. Edward Heller June 19, 2017 5:31 pm

    EG, re: Redskins. Undoubtedly, their mark is restored. Procedurally, though, how do you think they will proceed?

    And, should the PTO unilateral revoke its cancellation without having to be asked?

  12. David June 19, 2017 5:34 pm

    No, Ned. Ruining the case is arguing that reexamination is constitutional whereas IPR is not.

    Arguing that the Seventh Amendment is integral to Article III only demonstrates that you still don’t know what you are talking about.

  13. Ray June 19, 2017 5:39 pm

    @11 – Their mark is not restored yet. There is a pending case in the 4th Circuit that was put on hold pending the outcome of this case. Based on today’s decision, it would be expected the 4th Circuit Court will vacate the cancellation of the Redskins Mark.

  14. Edward Heller June 19, 2017 5:40 pm

    David, do you understand what the Feds did in both Patlex and MCM?

    They authorized the assignment of issue that has a 7th Amendment right to an administrative tribunal for final determination without a jury.

    That is plainly unconstitutional no matter how you cut it.

    Dabbling in public rights has only confused this issue from the very beginning — allowing both the Patlex court and the MCM court to decide that issue FIRST thereby ignoring the 7th Amendment issue.

    I am not saying you are solely responsible for the mess we are in, but you share a large portion of the blame.

  15. Edward Heller June 19, 2017 5:46 pm

    Ray@13, OK. But what about the thousands of folk who have lost patents in IPRs? Does each PO have to file suit against the PTO to have the cancellation revoked?

    That would seem absurd.

  16. Ray June 19, 2017 5:58 pm

    @Ed,

    I believe it would first be based on whether the issue was preserved in any way. If not, then I would believe the issue is waived. If a jury trial is a right, it can always be waived by not demanding it, objecting to not getting it, etc. People try cases to the bench all the time instead of a jury. If you lose, you don’t get to then say you want a jury trial.

    That being said, for those patent owners that have raised the issue, it would seem to turn on whether they persisted in their request with appeals. If not, then it is likely to be a waiver.

  17. Edward Heller June 19, 2017 6:03 pm

    Also, that recent Law Review article by Rothwell, purportedly on our side, quotes favorably from Lemley’s 7th Amendment article that is filed from one end to the other with mis-cites, egregious partial quotes and misquotes. Sanctionable if argued to a court. But that article, purportedly on our side, is as toxic to our cause as it can be to our case.

    Lemley is on the other side. He was a principle architect of IPRs, and is against jury trials. Misquotation, partial quotation and misleading quotation are his specialty. He might have some liberty of speech in drafting an law view article to be a little loose with the facts. But we should not be favorably citing Lemley for anything.

  18. Edward Heller June 19, 2017 6:07 pm

    Ray@16. I think you are right on that. At least, that will be the government position, and of course, the Feds will side with the government.

    But, if patent owner’s attorney did not raise the issue and they lost their client’s patents because of that, then they may be open to suits for damages for malpractice. Attorneys get sued all the time for failing to assert statute of limitations defenses.

  19. Edward Heller June 19, 2017 6:08 pm

    Sorry for the typoes, etc., in post 17.

  20. Ray June 19, 2017 6:22 pm

    I’m pretty sure no single person (Lemley or otherwise) carries much stroke with the SCOTUS.

    Further, I think the SCOTUS will be more interested in what they have said before, less on what the FedCir has done before, and what the briefing before them presents. I’m pretty sure they know the value of a law review article.

    I do agree with the sentiment David seems to propose in that I’m not certain the position needs to be so sweeping that the entire reexam process is necessarily unconstitutional.

    Patent owner initiated ex parte reexams would seem to be a waiver of the jury process. Additionally, third party initiated reexams have the ability for the patent owner to appeal a rejection to a district court for full hearing. Thus, at least in this case, there is an Article III judge making the full decision, much like in some bankruptcy cases.

    The IPR process is a different beast. No right to amend – only the illusionary right to file a motion to amend. No full decision from an Art III judge. Only review by FedCir on appeal grounds. etc.

    As I said, I would like to see them go away. I’m just doubtful the SCOTUS will wipe it all away.

  21. Ray June 19, 2017 6:23 pm

    @20 – when I refer to third party initiated reexams – I’m referring to ex parte reexams…

  22. Ned Heller June 19, 2017 6:50 pm

    Ray, I agree with you to the extent patent owners seek reexamination. But David appears to have been part of a team that tried to defend reexaminations while bringing down IPRs. They actually argued that reexaminations were constitutional, thus pulling the rug out from their constitutionality case big time, and totally wrecking any case they may have had concerning the Seventh Amendment.

    They also made arguments about Patlex’s holding that were inconsistent with Patlex. They ignored Judge Nies dissent in Lockwood that a holding that patent validity had a 7th AM right to a jury trial was inconsistent with Patlex, as it was.

    Their whole case was one mass of confusion from one end to another. It made no sense whatsoever. I opposed their filing of an amicus brief in MCM because of it. Their position did a lot of damage.

    Think of it. They undermined McCormick Harvesting, a case that directly held that the PTO could not upon reexamination of a patent, invalidate claims they thought unpatenatable, by nevertheless arguing that reexaminations were OK.

    You have to be kidding me.

    And now they have the gall to tell me, to my face, that I don’t know what I am talking about?

    Really?

    It is a very good thing indeed that Oils States copied our brief to the Supreme Court and not Coopers.

  23. Ray June 19, 2017 7:13 pm

    I guess I need to review the briefing in MCM to get a better understanding of it all.

    Frankly, I’m not too convinced Amicus Briefs pull too much in the Cert decision. From what I gather, it’s really the clerks doing much of the work in determining interesting questions – and it only takes four Justices to approved a cert petition. So, the four approving could be for or against and just find the issue of interest.

    It will definitely be interesting to see the briefing as it comes in.

  24. Night Writer June 19, 2017 8:15 pm

    @17: And guess what? Lemley does this in all his papers. He is a shameless. A highly unethical person. His paper on functional claims is shameful.

  25. Ray June 19, 2017 9:19 pm

    @Ed,

    Well, I read the briefing from what I think is from David. All I can think is David doesn’t may not do much courtroom or appellate work. Calling another party names like that is sophmoric in my opinion and strips away any standing your argument may have with the court.

    I fully understand the frustration and anger David is expressing, but that brief from HIA…

  26. Night Writer June 19, 2017 9:55 pm

    I spent some time analyzing one of Mark Lemley’s papers. I determined there was clear and convincing evidence of unethical conduct. There were omissions, misrepresentations, bad cites, etc. I started a complaint against Mark Lemley to be filed with Stanford Law School. I then did some investigation regarding about the likely outcome and found that Stanford law school along with other “top” law schools never discipline their faculty for any type of unethical conduct.

    So, the blame for people that are highly unethical like Mark Lemley is clearly Stanford Law School. What a third-world country we have become.

  27. Edward Heller June 19, 2017 10:23 pm

    Night, I hear you. You and I should join forces to monitor upcoming Lemley’s brief in Oil States.

  28. Night Writer June 20, 2017 6:31 am

    I think to save patent law people like Mark Lemley need to be held accountable. It would be fine if he were a lobbyist out of K Street working for Google, but a law professor from Stanford going around the country making arguments with no ethical considerations and pretending they are part of his scholarly work out of Stanford is a disgrace.

    Case in point, is Mark Lemley putting up a graph of patent filings to prove his hypothesis that patent filings continue to rise despite the loss in value of a patent from Alice and IPRs. Reality–Lemley did not normalize the data where he did not even take out foreign filings or adjust for growth in the number of people working in technology/science. Reality—patent filings are dropping. Reality–if Mark Lemley played the game he did with the data for patent filings in science he would have been removed from his professorship at Stanford.

    Mark Lemley needs to be held accountable.

  29. Mark Annett June 20, 2017 7:36 am

    By these same arguments shouldn’t the law against vulgarity in trademarks also fall. Especially, if I make it happy (eg “F**ken Happiest Place on Earth”).

    Why did the government not make/stick to the argument that this is not speech but that it is commerce and a form of business registration?

    The government lost the moment that it admitted in its arguments that it was speech. They had to know this was going to happen and I wonder if it wasn’t deliberate because it was a monumentally stupid thing to do.

    So my other question is, if I am a white supremacist group can I now register “Up with Nig…”?

    It appears to be the exact opposite of disparaging, based upon the courts explanation.

    My take away is that a word itself can’t be disparaging and it only becomes disparaging within the context of the words that surround. Therefore, alI I have to do is surround any term with happy words and I should be okay.

    Business registrations, just like money, should never be considered speech; they are commerce, which the government has the constitutional right to regulate.

    The implications of this decision sicken me!

  30. Mark Annett June 20, 2017 8:29 am

    So currently the USPTO has the following:

    “A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks.”

    It is absolutely ludicrous that the definition of a Trademark is now that it is a form government registered public speech.”

    If it is “public speech” then how can they now legitimately stop me from registering the trademark of someone else?

    Or maybe they can stop me from registering it but I shouldn’t I have a free right to use it as a form of public speech, regardless of whether not some registered it?

    A trademark used to be a form of property that you owned but how can you own public speech?

    I didn’t read the whole decision but with The Supreme Court stating that a trademark is public speech wouldn’t the logical implication be that no trademark is now enforceable?

    The Supreme Court is wrong in declaring that a trademark is public speech because these two definitions can’t logically exist at the same time!

  31. Ray June 20, 2017 8:42 am

    @Mark,

    “I didn’t read the whole decision…”

    Did you read any of it?

    Trademarks are private speech – not public speech.

    It’s very possible the phrases you mention are now registerable, but I’m guessing others may be filing these phrases already.

  32. Mark Annett June 20, 2017 9:12 am

    @Ray,

    Thanks, for the correction. I did intend to say “private” speech” rather than public. I had another argument in my head about it belonging to the “public” now and I just got befuddled with my language.

    I will correct my question. How can trademarks be “private” speech and still have any value, since everyone has a right to free speech?

    And, I will go and read the full decision now. 😉

  33. Ray June 20, 2017 11:10 am

    @Mark,

    I take it you are not a lawyer but are an interested person in TM law.

    Here is the short answer:

    Trademarks have value because the owner of the Mark has the ability to establish a recognizable brand and prevent others from using the Mark.

    To the extent you think “right to free speech” gives everyone the right to use the Mark, you really need to read up on TM law, the ability of Congress to control commerce under the commerce clause, and the many 1st amendment cases dealing with commercial speech.

  34. Mark Annett June 20, 2017 11:56 am

    @Ray

    Not a lawyer, just a patent agent, which as you know trademarks aren’t in our domain. 😉

    So, now it is my turn to ask if you have read the decision because the majority rejected “the clause that regulates the expressive component of trademarks and consequently cannot be treated as commercial speech” and then went on to dismiss the notion that it is government speech.

    As part of the opinion shared by five of the justices it even says, “regardless of whether trademarks are commercial speech…to the extent that they qualify as commercial speech…”

    They have chosen specifically declare trademarks as “private” speech and left the question of to what extent they are “commercial” speech open.

    All I am saying is that by declaring a trademark private speech rather than commercial speech we now have a big problem. Trademarks were not created by the constitution but the right to free speech was.

    Trademarks should be commercial speech period. By saying they are definitely afforded private speech protection and may still also be commercial speech to some extent then taken to its most extreme position trademarks become worthless.

    This is the only argument that should have been made.

  35. Confused Pharmacist June 20, 2017 10:47 pm

    So can I start a restaurant chain titled “[Racial Slur]s Not Allowed Here Pizzeria” and it will be protected (even if I let anyone come in and buy pizza, i.e. I’m not actually discriminating)? I’m no expert on trademark law, so if anyone can chime in I’m curious.

  36. Mark Annett June 21, 2017 9:15 am

    I am not an expert on trademark law but here is my answer to your question.

    Yesterday’s decision had nothing to with whether or not you could start the business named that either before or after yesterday, though state county or local law might have. Just as the Redskins and the Slants weren’t prohibited from naming their companies what they wanted.

    Yesterday’s decision was about whether or not the government has a right to advance its agenda of reducing hatred and demeaning activity by not granting people monopolies on the use of particular business names.

    The general public believes the government was forcing the Red Skins to change their name,mejicanos is not true. They were trying vary hard to induce them to change their name by taking away their monopoly on its use. They continued to keep their name and even if the decision had gone the other way they could have kept it. They just would not have been able to stop other people from per se selling merchandise that bore the name. This whole thing is all about money and commerce, not speech.

    So the answer to you question is maybe, the Supreme Court has opened the door for you to potentially prevail on getting a trade mark on that name you suggest and thereby prohibit other people from opening up other pizza places with that same name around the country.

    However, in my non-professional opinion, this particular language would still probably be considered disparaging as “Down with [Racial Slur]” was something that was called out as not being overly broad. So you would probably want to be a little more subtle.

  37. Ray June 21, 2017 9:41 am

    @Mark and Confused,

    The SCOTUS struck down the disparagement clause. It’s gone. Marks cannot be denied because they “may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” So, if you want to file the above Mark and satisfy the other registration requirements, you may be able to register it.

    The issue of whether you can display such a sign for your pizza store is separate from getting a trademark registered for it. Owning a trademark doesn’t mean other laws don’t apply to the use of the Mark. Also, whether the disparagement clause was or was not overturned has no effect on whether you could name your store and display the sign you pose.