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Matal v. Tam: The Supreme Court rules that "disparaging" marks can be trademarked

The Supreme Court has ruled that a trademark law that prohibits registration of a trademark that "disparages" others violates the Free Speech Clause of the First Amendment.

The case was brought by the Asian-American rock group "The Slants."  The trademark office denied their application for the term "THE SLANTS" on the basis that "slants" is considered by some derogatory of persons of Asian descent.  The rock group argued that by taking that slur as the name of their group, they were helping to "reclaim" the term and drain its demeaning force - arguments that were successful for the applicants of the "Dykes on Bikes" registration.  Owners of the trademark "Dykes on Bikes®" trademark were finally successful by demonstrating that the term "dyke" had lost its disparaging meaning in the LGBT community.  The Tam decision was decided on the First Amendment in that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys - and that leaving "disparagement" up to the government amounts to viewpoint discrimination.  The Tam decision should be good news to the owners of the Redskins football franchise, who had their "Redskins" mark cancelled in 2014 as being disparaging to Native Americans.  The Redskins case is pending.

The Lanham Act contains provisions that prevent certain trademarks from being registered.  For example a trademark cannot be registered if it is "merely descriptive" of goods (§1052(e)(1)) or if it is so similar to an already registered trademark or trade name that it is "likely to cause confusion" (§1052(d)).  At issue in Tam was the "disparagement clause," that 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)). 

Whether you personally like the Tam decision or not, it's a good thing legally.  Previous tests for disparagement were complex, confusing, and not consistently applied.  Depending on the examiner, some trademarks issue while others do not - a bane of our business that we affectionately call "the trademark lottery."  The guidelines set forth by the Tam decision will go a long way to eliminating the random results associated with the trademark lottery.  Eliminating this and similar arbitrary rules will define better guidelines for trademark register ability.

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