Matal v. Tam

137 S.Ct. 1744 (2017)

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Nature of the Case

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Facts

“Slants” is a derogatory term for persons of Asian descent. The Lanham Act contains provisions that bar certain trademarks from the principal register. “The disparagement clause” prohibits the registration of a trademark “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” §1052(a). When deciding whether a trademark is disparaging, an examiner at the PTO generally applies a “two-part test.” The examiner first considers “the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services.” “If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols,” the examiner moves to the second step, asking “whether that meaning may be disparaging to a substantial composite of the referenced group.” If the prima facie case of disparagement is made out, and the burden shifts to the applicant to prove that the trademark is not disparaging. Tam (P) is the lead singer of “The Slants.” The group “draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes” and has given its albums names such as “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” P sought federal registration of “THE SLANTS.” The PTO rejected the request, applying the PTO’s two-part framework and finding that “there is . . . a substantial composite of persons who find the term in the applied-for mark offensive.” Numerous dictionaries define ‘slants’ or ‘slant-eyes’ as a derogatory or offensive term. The PTO also cited that numerous performances of the band were canceled because of the band’s moniker. Also, several bloggers and commenters to articles on the band have indicated that they find the term and the applied-for mark offensive. P took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause. The clause engages in viewpoint-based discrimination, that the clause regulates the expressive component of trademarks and consequently cannot be treated as commercial speech, and that the clause is subject to and cannot satisfy strict scrutiny. D filed a petition for certiorari to decide whether the disparagement clause “is facially invalid under the Free Speech Clause of the First Amendment.”