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  • Wendi Gundersen

Supreme Court expands trademark eligibility



The Supreme Court struck down the disparagement clause in federal-trademark law in Matal v. Tam. That clause barred federal registration of marks that may "disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U. S. C. §1052(a).

In this case, Simon Tam—lead singer of The Slants—applied to register his band name as a trademark with the United States Patent and Trademark Office. That application was rejected under the disparagement clause—slants is considered by many to be offensive and disparaging of Asian-Americans. After unsuccessfully pursuing administrative appeals, Tam appealed to the Federal Circuit, which held the disparagement clause to be unconstitutional because it was a form of viewpoint discrimination.

The government appealed. And the Supreme Court affirmed the Federal Circuit. Various opinions were issued in this case, with Justice Alito writing for the Court with respect to certain legal conclusions. The entire Court—except for Justice Gorsuch, who didn't participate in the case—agreed that the disparagement clause was facially invalid because of viewpoint discrimination.

The Court and the concurring opinions determined that the disparagement clause amounted to government censorship of disparaging viewpoints. They further found that the justifications offered by the government were not enough to satisfy the high degree of scrutiny required to allow viewpoint discrimination.

After this case, it should be easier for applicants to register their marks, even if many people might find them offensive.


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