Matal v. Tam: SCOTUS Terminates Selective Trademark Registration

by Endya L. Hash, Issue Editor

Introduction: The Story of One Band’s Journey to the Supreme Court

Simon Tam began his rock group to empower fellow Asian Americans experiencing the racial discrimination that Tam and his bandmates have endured throughout their lives.[1] As part of the band’s empowerment message, the group named themselves “THE SLANTS” and subsequently sought federal registration of their trademark.[2] The Patent and Trademark Office (“PTO”) denied the application for registration because of a provision of the Lanham Act that prohibited registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute . . . [any] . . . persons, living or dead.”[3] PTO investigators unpredictably and selectively enforce this section of the Lanham Act, which commonly is referred to as the disparagement clause.[4] Tam appealed the registration denial all the way to the Federal Circuit, at which an en banc panel found the disparagement clause to be facially unconstitutional under the First Amendment’s Free Speech Clause.[5]

SCOTUS Steps in—Well, Sort-of at Least

The government asked the Supreme Court to review the Federal Circuit’s findings, and the Supreme Court agreed to hear the case.[6] Ultimately, the Court affirmed the judgment of the Federal Circuit, finding a violation of the First Amendment’s Free Speech Clause.[7] Although all justices agreed that a violation of the Free Speech Clause occurred, no majority of the justices could agree on the reason why the statute violated the Free Speech Clause.[8] In the plurality opinion, authored by Justice Alito and joined by Chief Justice Roberts, Justice Thomas, and Justice Breyer, the justices concluded that a decision regarding whether trademarks are commercial speech is unnecessary because, assuming that trademarks are commercial speech, the disparagement clause does not survive the Central Hudson intermediate scrutiny standard afforded forms of commercial speech.[9] Conversely, in the main concurring opinion, authored by Justice Kennedy and joined by Justices Ginsburg, Sotomayor, and Kagan, the justices found a violation of the Free Speech Clause because the statutory provision is subject to rigorous constitutional scrutiny whether it is commercial speech or other kinds of speech.[10] These justices found that, according to Sorrell v. IM Health Inc., when the government seeks to restrict speech to suppress the ideas conveyed, the courts must apply a strict scrutiny standard; in the present case, the disparagement clause results in clear viewpoint discrimination.[11]

The only portion of the opinion upon which every justice agreed was Part III(A), which addressed the government’s argument that trademarks were government speech and therefore subject to higher regulation than private speech.[12] This Blogpost briefly addresses the implications of this ruling on both Free Speech principles and trademark law.

The Scoop on Government Speech 

For years, the Supreme Court has acknowledged that the Free Speech Clause does not regulate forms of government speech.[13] Government speech is subject to greater regulation than private speech, and the Court emphasizes the importance of this distinction: “[i]f 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.”[14] Although this principle seems simple, the line separating government speech from private speech is thin. Significantly, all of the justices agreed that trademarks are not government speech, and through their opinion, the Court finally outlined the outer boundaries of government speech doctrine by commenting on three major cases: (1) Johanns; (2) Summum; and (3) Walker.[15]

The oldest case cited by the Supreme Court in Tam provides an example of obvious government speech.[16] In Johanns v. Livestock Marketing Ass’n., the Court addressed whether a series of advertisements that were created by the government as a result of a federal statute consisted of government speech.[17] The Court classified the advertisements as government speech because (1) Congress and the Secretary of Agriculture provided the guidelines for the content of the ads, (2) the Department of Agriculture officials partook in discussions regarding the content of the ads, and (3) the Secretary could edit and reject any proposed ad.[18] Because the government was involved from beginning to end in the content and method of communication, the government clearly had established the speech.[19]

The Court then addressed a slightly more complicated case. In Pleasant Grove City v. Summum, the Court determined that monuments displayed in a public park but created and donated by private persons qualified as government speech.[20] In this case, the Court established several factors to determine whether speech qualifies as government speech: whether (1) governments commonly use this method of speech to communicate to the public; (2) the method of speech is known by the public to be highly selective in what is displayed; (3) the government would be overrun if obligated to accept all submissions from the public; (4) the method of speech is often closely identified in the public mind with the government; and (5) the method of speech is meant to convey a government message.[21]

Using the factors created in Summum, the Court identified “the outer bounds of the government speech doctrine” in Walker v. Texas Div., Sons of Confederate Veterans, Inc.[22] In this case, the Court determined whether the decorative elements of a license plate are considered government speech.[23] The Court found that license plates qualify as government speech because they are used commonly to convey state messages, often are closely associated with the government in the mind of the public, and are subject to the state’s direct control over decorative elements[24]

Applying the factors derived from Summum, the Tam Court found that trademarks are not government speech.[25] First, trademarks are not used traditionally to convey government messages.[26] Second, no evidence exists to show that the public associates a trademark’s content with the government.[27] Third, trademarks are not created or edited by the government.[28] In fact, if the trademark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory, and the examiner has no discretion to edit or reject a trademark. [29] In short, the Court did not find that any of the factors indicated government speech applicable to trademark registration.[30]

Additionally, the Court noted several policy reasons why a trademark should not be classified as government speech. Perhaps the most convincing reason trademarks should not be considered government speech lies in the catastrophic implications of this ruling for other areas of intellectual property law.[31] A holding that registration of intellectual property converts private speech into government speech creates the most worrisome implication for copyright registration.[32] If registering forms of expression either as a trademark or a copyright removes First Amendment protections, the government could regulate all forms of expression, potentially restricting registration to messages that the government finds beneficial to their interests.[33] Interestingly, the Court does not address that such a ruling would resemble the very roots of copyrights found in the English Licensing of the Press Act of 1662.[34] The English government created the original copyright system to permit the owner of a printing press to make copies of particular written works.[35] These copyrights were granted exclusively for works that the government wanted to promulgate and denied for writings that the government wanted to suppress.[36] If today’s modern copyright registration could remove First Amendment protection from an expressive work, the government could return quickly to a system that censors all speech.[37]

Does Tam Really Change Trademark Law?

Some scholars suggest that dilution laws[38] and other expansive trademark doctrines in which the government prohibits non-misleading uses of protected trademarks may not survive constitutional scrutiny after Tam.[39] In the past, the dilution claims have survived First Amendment scrutiny; commentators argue, however, that this case represents a heightening of the scrutiny of commercial speech regulations, which may create a stronger case for litigants who argue for the unconstitutionality of dilution laws.[40]

Some commentators, however, disagree with the implications of this case on dilution law, arguing that this interpretation confuses the meaning of dilution by tarnishment.[41] One scholar argues that trademarks possess a dual nature of both speech and property interest.[42] When the mark is diluted in a way that potentially can alter the mark’s meaning, this dilution has the power to harm a property interest, which validates the regulation of this use by the government.[43] In other words, “[j]ust because the government cannot refuse to register a car bearing a racist bumper sticker does not mean it cannot prohibit others from vandalizing that racist sticker.”[44] Trademarks fulfill their function because of the owner’s ability to shape their content and preserve the owner’s goodwill[45]—a function that is harmed through dilution by blurring and tarnishment.[46] Essentially, these scholars assert that the disparagement decision in Tam did not factor into the purposes and goals of trademark law.[47]

Other commentators counter that the Tam Court did not resolve the First Amendment answer by strict analysis of language from prior cases but from analyzing public policy, conflicts in policies, and the implications of application.[48] Therefore, these commentators do not think Tam will be controlling in a dilution by tarnishment case.[49]

In the end, this case has greater implications for its definitive analysis of the government speech doctrine and does not change trademark law in any meaningful way. As for the disparagement clause of the Lanham Act, it’s “hasta la vista, baby.”[50]


[1] Matal v. Tam, 137 S. Ct. 1744, 1747 (2017).

[2] Id.

[3] 15 U.S.C. § 1052(a) (2012); Tam, 137 S. Ct. at 1747.

[4] Tam, 137 S. Ct. at 1756−57, n.5. See, e.g., Carl J. Minniti, III, The Lanham Act’s Unconstitutional Hodgepodge, 17 Rutgers J. L. & Religion 315, 325, 327, 340 (2016); Roni A. Elias, Where Never is Heard a Disparaging Word: The Anti-Disparagement Provision of the Lanham Act and the Problem of Trademarks Based on Derogatory Descriptions of Native Americans, 64 Fed. Law. 27, 28−32 (2017); James Stewart & Sarah Waidelich, Redskins and Slants: The Lanham Act and the First Amendment on a Collision Course, 31 Comm. Law. 11, 15 (2015).

[5] Id. at 1747. Once a trademark registration is denied by an examining attorney at the Patent and Trademark Office, the applicant may appeal the denial to the Trademark Trial and Appeal Board (“TTAB”). See generally U. S. Patent and Trademark Office, Trademark Trial and Appeal Board Manual of Procedure, (last visited Sept. 20, 2017). The Federal Circuit reviews judgments from the TTAB []. See generally id.

[6] Tam, 137 S. Ct. at 1747.

[7] Id.

[8] See id. at 1747.

[9] Id. at 1763−65. Commercial speech is speech that proposes a commercial transaction and therefore exists in a regulated marketplace. Ohralik v. Ohio State Bar Ass’n, 436 U.S. 447, 455–56 (1978). Because regulation of commercial speech is more constitutionally tolerable than regulation of private speech, commercial speech regulations are subject to a specific intermediate scrutiny test. Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n, 447 U.S. 557 (1980). The intermediate scrutiny test states that regulations affecting commercial speech do not violate the First Amendment if any of the following are true: (1) the regulated speech proposes an economic transaction involving an illegal activity; (2) the regulated speech is misleading; and (3) the regulation substantially advances an important government interest, and the regulation is tailored narrowly to serve the government’s interest. Id. at 562.

[10] Tam, 137 S. Ct. at 1767. Lisa Ramsey, Symposium: Increasing First Amendment scrutiny of Trademark Law after Matal v. Tam, SCOTUSblog (June 20, 2017, 2:33 PM), [].

[11] Tam, 137 S. Ct. 1744, 1767−69. Justice Gorsuch did not take part in this opinion. Id. at 1750.

[12] Id. at 1757–60.

[13] Id. (citing Pleasant Grover City v. Summum, 555 U.S. 460, 467 (2009); Johanns v. Livestock Mktg. Ass’n., 544 U.S. 550, 553 (2005) (“[T]he Government’s own speech . . . is exempt from First Amendment Scrutiny.”); Bd. of Regents of Univ. of Wis. Sys. v. Southworth, 529 U.S. 217, 235 (2000)).

[14] Id. at 1758.

[15] Id. at 1759–60.

[16] Id. at 1759 (citing Johanns, 544 U.S. 550, 560).

[17] Id. (citing Johanns, 544 U.S. 550).

[18] Id. (citing Johanns, 544 U.S. 550).

[19] Id. (citing Johanns, 544 U.S. 550).

[20] Id. (citing Pleasant Grove City v. Summum, 555 U.S. 460, 472 (2009)).

[21] Id. at 1759–60 (citing Summum, 555 U.S. at 472).

[22] Id. at 1760 (citing Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015)).

[23] Id. (citing Walker, 135 S. Ct. 2239).

[24] Id. (citing Walker, 135 S. Ct. 2239).

[25] 1759.

[26] Id. at 1760.

[27] Id.

[28] Id. at 1758.

[29] Id. The PTO also has argued that registration does not constitute approval of a mark. Id. at 1759 (citing Old Glory Condom Corp., 26 U.S.P.Q.2d 1216, 1220 n.3 (T.T.A.B. 1993) (“[I]ssuance of a trademark registration . . . is not a government imprimatur.”)).

[30] Id.

[31] Id. at 1760.

[32] Id.

[33] Id.

[34] See Mark Rose, The Public Sphere and the Emergence of Copyright: Areopagitica, the Stationers’ Company, and the Statute of Anne, 12 Tul. J. Tech. & Intell. Prop. 123, 138 (2009).

[35] See id. at 138.

[36] See id. at 138.

[37] See L. Ray Patterson & Craig Joyce, Copyright in 1791: An Essay Concerning the Founders’ View of the Copyright Power Granted to Congress in Article I, Section 8, Clause 8 of the U.S. Constitution, 52 Emory L.J. 909, 952 (2003).

[38] The Lanham Act creates a cause of action to protect the use of famous marks regardless of the presence or likelihood of any confusion or economic injury or whether the trademark is used commercially. 15 U.S.C. §1125(c) (2012); See also Dilution, Black’s Law Dictionary (10th ed. 2014) (defining “dilution” as the “impairment of a famous trademark’s strength, effectiveness, or distinctiveness through the use of a mark on an unrelated product”).

[39] Ramsey, supra note 10.

[40] Id; Christine Farley, Symposium: Free Speech Comes to Trademark Law, SCOTUSblog (June 20, 2017, 2:25 PM), []; Hugh Hansen, Symposium: Most Important Free Speech Case in Many Years, SCOTUSblog (June 22, 2017, 11:52 AM), [].

[41] Irina Manta, Symposium: The cacophony of trademarks is not government speech, SCOTUSblog (June 20, 2017, 5:06 PM), []; Hansen, supra note 40. Tarnishment is a “form of dilution that occurs when a trademark’s unauthorized use degrades the mark and diminishes its distinctive quality.” Tarnishment, Black’s Law Dictionary (10th ed. 2014).

[42] Manta, supra note 41.

[43] Id.

[44] Id.

[45] Goodwill refers to “[a] business’s reputation, patronage, and other intangible assets that are considered when appraising the business . . . . Because an established business’s trademark or servicemark is a symbol of goodwill, trademark infringement is a form of theft of goodwill. By the same token, when a trademark is assigned, the goodwill that it carries is also assigned.” Goodwill, Black’s Law Dictionary (10th ed. 2014).

[46] Manta, supra note 41. Blurring refers to “[a] form of dilution in which goodwill in a famous mark is eroded through the mark’s unauthorized use by others on or in connection with dissimilar products or services.” Blurring, Black’s Law Dictionary (10th ed. 2014).

[47] Manta, supra note 41.

[48] Hansen, supra note 40..

[49] Id.

[50] HASTA LA VISTA, BABY, Registration No. 87567844.