By Yungchao Song
Background on Matal v. Tam
In 2006, Simon Shiao Tam, an Asian American, founded an all-Asian rock band named “The Slants.” In 2011, he applied to register “The Slants” as a trademark with the Patent and Trademark Office (“PTO”). The PTO denied the application because the mark “The Slants,” as used for an all-Asian rock band, would disparage people of Asian descent. The decision was affirmed on appeal before the Trademark Trial and Appeal Board, but overturned by the Federal Circuit, which held that the Disparagement Clause is unconstitutional.[1]
The PTO filed petition for certiorari. The Supreme Court unanimously affirmed the decision, holding that: (1) trademarks are private speech, and therefore not required to maintain viewpoint neutrality under the First Amendment; (2) the First Amendment prohibits government from regulating the content or viewpoint of the marks unless it passes strict scrutiny; (3) the Disparagement Clause failed to pass strict scrutiny due to lack of a compelling government interest; (4) and therefore, the viewpoint review of marks during registration is unconstitutional.[2]
The Influence on Word Mark Registration
Because of fierce competition, more and more startups try to attract customers with unique trademarks. However, some go to an extreme and try to use marks that fall outside of traditional norms to make themselves distinctive by trying to register indecent, obscene, or insulting words or phrases.[3] While some succeed, the majority have failed because the Disparagement Clause had been a gatekeeper over the past 71 years.[4] But after Matal, the PTO might not be able to reject a registration based on an objectionable viewpoint the mark holds against other products or manufacturers.
Matal did not evaluate the constitutionality of the tarnishment clause, so the Federal Trademark Dilution Act (FTDA) was not automatically struck down.[5] Under the FTDA, if the content of a mark tarnishes another famous trademark by linking it to products that are of poor quality, or which are portrayed in an unwholesome or distasteful light that is likely to reflect poorly upon the owner’s product, the mark is not registerable or protected by federal trademark law.[6] [7] If the tarnishment clause stays valid, there will be a weird situation where disparaging people is acceptable when registering a mark, while tarnishing other trademarks is not. The unreasonable situation may cause the tarnishment clause to be struck down in the future to make the Lanham Act totally consistent with Matal. But until then, the tarnishment clause remains good law. Even though there is more latitude for business owners regarding their trademark, they should avoid using language that tarnishes other famous trademarks to avoid lawsuits.
The Influence of the Graphic Trademark
The extent to which this decision could force the PTO to allow registration of graphic images which may offend social, societal, or moral norms is worth considering. By the logic of Matal, graphic trademarks are also private speech; the government is prohibited from regulating their content or viewpoint unless strict scrutiny is passed. However, if the graphic marks or designs far exceed the “offensiveness” quotient by bearing pornography or child obscenity, how will the PTO respond? In the 1960s, Supreme Court Justice Potter Stewart famously found that obscenity does not fall under the right to free speech.[8] Thus, although Matal did not address obscene trademarks, it is highly possible the review of such marks would be based on the Miller test: if the graphic mark is obscene, it may not be registered.[9]
Conclusion
After Matal v. Tam, the threshold of trademark has been lowered. There will be more and more startups or small businesses applying for trademarks that bear suggestive or provocative language as a result of the elimination of the Disparagement Clause. However, law practitioners should still take note of other limitations on trademark content, such as the tarnishment clause and constitutional restraint on pornography, and advise their clients to err on the side of caution when registering their trademarks.
[1] Armen N. Nercessian, Matthew B. Becker, Eric Ball, Supreme Court Rock the Trademark Office in “Slants” Case
[2] Matal v. Tam, 582 U.S. ___ (2017).
[3] Jess Colon, Did the Supreme Court Slants Case Just Approve a Big FU to Trademark Owners? (Sept. 29, 2017, 11:45AM), https://www.forbes.com/sites/jesscollen/2017/06/19/did-the-supreme-court-just-approve-a-big-fu-to-the-trademark-community/2/#57718cb01e27.
[4] The Lanham (Trademark) Act was enacted July 5, 1946, codified at 15 U.S.C. § 1051.
[5] 15 U.S. Code § 1125.
[6] The dilution law in essence is about content review.
[7] Mattel v. MCA Records, 296 F.3d 894 (9th Cir. 2002) (holding that the use of a mark that linked BARBIE with pornography was prohibited under the Dilution Act because the mark adversely colored the public’s impressions of BARBIE).
[8] Jacobellis v. Ohio, 378 U.S. 184, 193 (1964).
[9] Miller v. California, 413 U.S. 15, 18 (1973), (holding that obscene materials shall pass a three-prong test: (1) appeals to the prurient interest, (2) offensive to a community, (3) lack of serious literary, artistic, political, or scientific value).
