Matal v. Tam
137 S. Ct. 1744
| SCOTUS | 2017Background
- Simon Tam, lead singer of the band “The Slants,” sought federal registration of the trademark THE SLANTS to "reclaim" a racial slur directed at Asians; the PTO denied registration under 15 U.S.C. §1052(a) (the "disparagement clause").
- The PTO applies a two-step test: (1) determine the mark’s likely meaning; (2) whether that meaning is disparaging to a "substantial composite" of the referenced group; applicant intent or membership in the group is not dispositive.
- Tam exhausted administrative remedies (TTAB) and sued; the en banc Federal Circuit held §1052(a) facially unconstitutional under the First Amendment.
- The Government defended the statute by arguing trademarks are government speech, or akin to a government subsidy/program, and alternatively that trademarks constitute commercial speech subject to intermediate (Central Hudson) review.
- The Supreme Court (majority opinion by Alito; concurrence by Kennedy joined by three Justices) affirmed the Federal Circuit, holding the disparagement clause violates the Free Speech Clause because it constitutes viewpoint discrimination; rejected the government-speech and subsidy/program characterizations and found the clause fails even Central Hudson review.
Issues
| Issue | Plaintiff's Argument (Tam) | Defendant's Argument (Matal / PTO) | Held |
|---|---|---|---|
| Scope of §1052(a): does "persons" exclude racial/ethnic groups? | "Persons" means natural or juristic persons; racial/ethnic groups are non-juristic and thus outside the clause. | "Persons" in context includes members of groups; disparaging a substantial composite of a group disparages persons. | Held: clause covers marks disparaging racial/ethnic groups; Tam's narrow textual reading rejected. |
| Is the disparagement clause constitutional under the First Amendment (viewpoint discrimination)? | The statute is viewpoint-neutral because it bans disparagement equally across all groups. | The statute is permissible regulation of marks (or government may favor non-disparaging speech). | Held: clause is viewpoint-based regulation (bans derogatory viewpoints within a subject category) and infringes the First Amendment. |
| Are registered trademarks government speech or a government subsidy/program (so less scrutiny applies)? | Trademarks are private speech; registration is not government speech; registration is not a subsidy akin to Rust/Finley. | Registration renders marks government speech or is a government program/subsidy, permitting content-based limits. | Held: trademarks are private speech; registration does not convert them into government speech; subsidy/program analogies fail. |
| If trademarks are commercial speech, does §1052(a) survive Central Hudson intermediate scrutiny? | Even if commercial, the clause does not serve a substantial interest narrowly tailored to the interest. | Clause protects interests in preventing offensive messaging and preserving orderly commerce. | Held: clause fails Central Hudson (not narrowly drawn; interest in banning offensive ideas conflicts with First Amendment). |
Key Cases Cited
- Pleasant Grove City v. Summum, 555 U.S. 460 (government speech doctrine applied to monuments)
- Johanns v. Livestock Marketing Assn., 544 U.S. 550 (government-subsidized advertising as government speech)
- Rosenberger v. Rector & Visitors of Univ. of Va., 515 U.S. 819 (viewpoint discrimination in funding of student publications)
- Sorrell v. IMS Health Inc., 564 U.S. 552 (heightened scrutiny for viewpoint-based regulation of speech)
- Central Hudson Gas & Elec. v. Public Serv. Comm’n, 447 U.S. 557 (commercial-speech intermediate-scrutiny test)
- Texas v. Johnson, 491 U.S. 397 (First Amendment protects offensive political expression)
- United States v. Stevens, 559 U.S. 460 (narrow categories of unprotected speech)