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August 15, 2018 | From the blogUncategorized

What is a Disparagement Clause, and How Does it Work?

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In August 2015 we wrote about the implications of the Washington Redskins’ trademark dispute.  Following legal efforts by five Native Americans who considered the term “redskin” to be disparaging, a federal judge ordered the cancellation of multiple federally registered trademarks owned by the Redskins, including the team’s name itself.

This legal battle continued until June 2017, when the Native American plaintiffs abandoned their efforts in federal appeals court.  The reason was that a few days prior, in a separate case (Matal v. Tam), the Supreme Court of the United States unanimously decided, in part, that “[t]he Disparagement Clause of the Lanham Act violates the First Amendment’s Free Speech Clause.”

Matal v. Tam involved an Asian rock band called “The Slants.” The founder of the band, Simon Tam, sought to register the band’s name with the U.S. Trademark Office. The Office denied the application under the Disparagement Clause, stating that the name might offend “persons of Asian descent.” Tam contested this decision through the administrative appeals process of the U.S. Patent and Trademark Office. After two unsuccessful attempts, he appealed to the U.S. Court of Appeals for the Federal Circuit, where the Court found the Disparagement Clause to be unconstitutional.

The Supreme Court affirmed the lower court’s decision, stating that the Clause constituted viewpoint discrimination, and was thus forbidden.  The test for viewpoint discrimination is determining whether the government singled out a particular opinion or perspective on some subject matter (speech) based on the content of that speech.  Since the Disparagement Clause prevented ‘derogatory’ marks which depended on the judgment of the government, essentially, “to permit viewpoint discrimination . . .  [would be] to permit government censorship.”  The Court further explained that even though demeaning speech can be hateful, individuals have the freedom to express those thoughts. Thus, the Court held the Disparagement Clause unconstitutional.

Soon after Matal v. Tam, the Federal Circuit held in another case (In re Brunetti) that scandalous and immoral marks can be allowed trademark registration. Together, in re Brunetti and Matal v. Tam suggest a significant upshot for those seeking to protect edgy or controversial marks.  However, the USPTO currently does not have clear guidelines on when interests in preventing hate speech begin to supersede First Amendment protections.  Therefore, until the USPTO issues updated guidelines, the sky seems to be the limit for free speech.

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Photo by T. Chick McClure on Unsplash

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