Matal v. Tam (582 US ___(2017)
SUPREME COURT
OF THE UNITED STATES
JOSEPH MATAL, INTERIM
DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE,
PETITIONER v. SIMON SHIAO TAM
on writ of certiorari
to the united states court of appeals for the federal
circuit
June 19, 2017
Justice Alito announced the
judgment of the Court and delivered the opinion of the
Court with respect to Parts I, II, and III–A, and an
opinion with respect to Parts III–B, III–C, and IV, in
which The Chief Justice, Justice Thomas, and Justice
Breyer join.
This case concerns a dance-rock band’s
application for federal trademark registration of the
band’s name, “The Slants.” “Slants” is a derogatory term
for persons of Asian descent, and members of the band
are Asian-Americans. But the band members believe that
by taking that slur as the name of their group, they
will help to “reclaim” the term and drain its
denigrating force.
The Patent and Trademark Office (PTO)
denied the application based on a provision of federal
law prohibiting the registration of trademarks that may
“disparage . . . or bring . . . into
contempt or disrepute” any “persons, living or dead.” 15
U. S. C. §1052(a). We now hold that this
provision violates the Free Speech Clause of the First
Amendment. It offends a bedrock First Amendment
principle: Speech may not be banned on the ground that
it expresses ideas that offend.
I
A
“The principle underlying trademark
protection is that distinctive marks—words, names,
symbols, and the like—can help distinguish a particular
artisan’s goods from those of others.” A trademark
“designates the goods as the product of a particular
trader” and “protects his good will against the sale of
another’s product as his.” It helps consumers identify
goods and services that they wish to purchase, as well
as those they want to avoid.
“Federal law does not create
trademarks.” Trademarks and their precursors have
ancient origins, and trademarks were protected at common
law and in equity at the time of the founding of our
country. For most of the 19th century, trademark
protection was the province of the States.
Eventually, Congress stepped in to provide a degree of
national uniformity, passing the first federal
legislation protecting trademarks in 1870.
The foundation of current federal trademark law is the
Lanham Act, enacted in 1946. By that time,
trademark had expanded far beyond phrases that do no
more than identify a good or service. Then, as now,
trademarks often consisted of catchy phrases that convey
a message.
Under the Lanham Act, trademarks that
are “used in commerce” may be placed on the “principal
register,” that is, they may be federally registered.
There are now more than two million marks that have
active federal certificates of registration. This system
of federal registration helps to ensure that trademarks
are fully protected and supports the free flow of
commerce. “[N]ational protection of trademarks is
desirable,” we have explained, “because trademarks
foster competition and the maintenance of quality by
securing to the producer the benefits of good
reputation.”
B
Without federal registration, a valid
trademark may still be used in commerce. And an
unregistered trademark can be enforced against would-be
infringers in several ways. Most important, even if a
trademark is not federally registered, it may still be
enforceable under §43(a) of the Lanham Act, which
creates a federal cause of action for trademark
infringement. Unregistered trademarks may also be
entitled to protection under other federal statutes,
such as the Anticybersquatting Consumer Protection Act.
And an unregistered trademark can be enforced under
state common law, or if it has been registered in a
State, under that State’s registration system.
Federal registration, however, “confers
important legal rights and benefits on trademark owners
who register their marks.” Registration on the
principal register (1) “serves as ‘constructive notice
of the registrant’s claim of ownership’ of the mark”;
(2) “is ‘prima facie evidence of the validity of the
registered mark and of the registration of the mark, of
the owner’s ownership of the mark, and of the owner’s
exclusive right to use the registered mark in commerce
on or in connection with the goods or services specified
in the certificate"; and (3) can make a mark
“ ‘incontestable’ ” once a mark has been
registered for five years.” Registration also
enables the trademark holder “to stop the importation
into the United States of articles bearing an infringing
mark.”
C
The Lanham Act contains provisions
that bar certain trademarks from the principal register.
For example, a trademark cannot be registered if it is
“merely descriptive or deceptively misdescriptive” of
goods, or if it is so similar to an already registered
trademark or trade name that it is “likely
. . . to cause confusion, or to cause mistake,
or to deceive.”
At issue in this case is one such
provision, which we will call “the disparagement
clause.” This provision 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). This clause appeared in the
original Lanham Act and has remained the same to this
day.
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 examiner finds that a “substantial
composite, although not necessarily a majority, of the
referenced group would find the proposed mark
. . . to be disparaging in the context of
contemporary attitudes,” a prima facie case of
disparagement is made out, and the burden shifts to the
applicant to prove that the trademark is not
disparaging. What is more, the PTO has specified
that “[t]he fact that an applicant may be a member of
that group or has good intentions underlying its use of
a term does not obviate the fact that a substantial
composite of the referenced group would find the term
objectionable.”
D
Simon Tam is the lead singer of “The
Slants.” He chose this moniker in order to “reclaim” and
“take ownership” of stereotypes about people of Asian
ethnicity. 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.”
Tam sought federal registration of “THE
SLANTS,” on the principal register, but an examining
attorney at 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.” The
examining attorney relied in part on the fact that
“numerous dictionaries define ‘slants’ or ‘slant-eyes’
as a derogatory or offensive term.” The examining
attorney also relied on a finding that “the band’s name
has been found offensive numerous times”—citing a
performance that was canceled because of the band’s
moniker and the fact that “several bloggers and
commenters to articles on the band have indicated that
they find the term and the applied-for mark offensive.”
Tam contested the denial of
registration before the examining attorney and before
the PTO’s Trademark Trial and Appeal Board (TTAB) but to
no avail. Eventually, he 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 majority found
that 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. The
majority also rejected the Government’s argument that
registered trademarks constitute government speech, as
well as the Government’s contention that federal
registration is a form of government subsidy. And
the majority opined that even if the disparagement
clause were analyzed under this Court’s commercial
speech cases, the clause would fail the “intermediate
scrutiny” that those cases prescribe....
The Government filed a petition for
certiorari, which we granted in order to decide whether
the disparagement clause “is facially invalid under the
Free Speech Clause of the First Amendment”....
III
Because the disparagement clause
applies to marks that disparage the members of a racial
or ethnic group, we must decide whether the clause
violates the Free Speech Clause of the First Amendment.
And at the outset, we must consider three arguments that
would either eliminate any First Amendment protection or
result in highly permissive rational-basis review.
Specifically, the Government contends (1) that
trademarks are government speech, not private speech,
(2) that trademarks are a form of government subsidy,
and (3) that the constitutionality of the disparagement
clause should be tested under a new “government-program”
doctrine. We address each of these arguments below.
A
The First Amendment prohibits
Congress and other government entities and actors from
“abridging the freedom of speech”; the First Amendment
does not say that Congress and other government entities
must abridge their own ability to speak freely. And our
cases recognize that “[t]he Free Speech Clause
. . . does not regulate government
speech.”
As we have said, “it is not easy to
imagine how government could function” if it were
subject to the restrictions that the First Amendment
imposes on private speech.....Imposing a requirement of
viewpoint-neutrality on government speech would be
paralyzing. When a government entity embarks on a course
of action, it necessarily takes a particular viewpoint
and rejects others. The Free Speech Clause does not
require government to maintain viewpoint neutrality when
its officers and employees speak about that venture.
Here is a simple example. During the
Second World War, the Federal Government produced and
distributed millions of posters to promote the war
effort. There were posters urging enlistment, the
purchase of war bonds, and the conservation of scarce
resources. These posters expressed a viewpoint, but the
First Amendment did not demand that the Government
balance the message of these posters by producing and
distributing posters encouraging Americans to refrain
from engaging in these activities.
But while the government-speech
doctrine is important—indeed, essential—it is a doctrine
that is susceptible to dangerous misuse. If private
speech could be passed off as government speech by
simply affixing a government seal of approval,
government could silence or muffle the expression of
disfavored viewpoints. For this reason, we must exercise
great caution before extending our government-speech
precedents.
At issue here is the content of
trademarks that are registered by the PTO, an arm of the
Federal Government. The Federal Government does not
dream up these marks, and it does not edit marks
submitted for registration. Except as required by the
statute involved here, an examiner may not
reject a mark based on the viewpoint that it appears to
express. Thus, unless that section is thought to apply,
an examiner does not inquire whether any viewpoint
conveyed by a mark is consistent with Government policy
or whether any such viewpoint is consistent with that
expressed by other marks already on the principal
register. Instead, if the mark meets the Lanham Act’s
viewpoint-neutral requirements, registration is
mandatory....
In light of all this, it is far-fetched
to suggest that the content of a registered mark is
government speech. If the federal registration of a
trademark makes the mark government speech, the Federal
Government is babbling prodigiously and incoherently. It
is saying many unseemly things. It is expressing
contradictory views. It is unashamedly endorsing a vast
array of commercial products and services. And it is
providing Delphic advice to the consuming public.
For example, if trademarks represent
government speech, what does the Government have in mind
when it advises Americans to “make.believe” (Sony),
“Think different” (Apple), “Just do it” (Nike), or “Have
it your way” (Burger King)? Was the Government warning
about a coming disaster when it registered the mark
“EndTime Ministries”?
The PTO has made it clear that
registration does not constitute approval of a mark. And
it is unlikely that more than a tiny fraction of the
public has any idea what federal registration of a
trademark means.
None of our government speech cases
even remotely supports the idea that registered
trademarks are government speech....
Our decision in Summum is
similarly far afield. A small city park contained 15
monuments. Eleven had been donated by private groups,
and one of these displayed the Ten Commandments. A
religious group claimed that the city, by accepting
donated monuments, had created a limited public forum
for private speech and was therefore obligated to place
in the park a monument expressing the group’s religious
beliefs.
Holding that the monuments in the park
represented government speech, we cited many factors.
Governments have used monuments to speak to the public
since ancient times; parks have traditionally been
selective in accepting and displaying donated monuments;
parks would be overrun if they were obligated to accept
all monuments offered by private groups; “[p]ublic parks
are often closely identified in the public mind with the
government unit that owns the land”; and “[t]he
monuments that are accepted . . . are meant to
convey and have the effect of conveying a government
message.”
Trademarks share none of these
characteristics. Trademarks have not traditionally been
used to convey a Government message. With the exception
of the enforcement of 15 U. S. C. §1052(a),
the viewpoint expressed by a mark has not played a role
in the decision whether to place it on the principal
register. And there is no evidence that the public
associates the contents of trademarks with the Federal
Government.
This brings us to the case on which the
Government relies most heavily, Walker, which
likely marks the outer bounds of the government-speech
doctrine. Holding that the messages on Texas specialty
license plates are government speech, the Walker
Court cited three factors distilled from Summum.
First, license plates have long been used by the States
to convey state messages. Second, license plates “are
often closely identified in the public mind” with the
State, since they are manufactured and owned by the
State, generally designed by the State, and serve as a
form of “government ID.” Third, Texas
“maintain[ed] direct control over the messages conveyed
on its specialty plates.” As explained above, none of
these factors are present in this case....
Perhaps the most worrisome implication
of the Government’s argument concerns the system of
copyright registration. If federal registration makes a
trademark government speech and thus eliminates all
First Amendment protection, would the registration of
the copyright for a book produce a similar
transformation?
The Government attempts to distinguish
copyright on the ground that it is “the engine of free
expression,” but as this case illustrates, trademarks
often have an expressive content. Companies spend huge
amounts to create and publicize trademarks that convey a
message. It is true that the necessary brevity of
trademarks limits what they can say. But powerful
messages can sometimes be conveyed in just a few words.
Trademarks are private, not government,
speech.
B
We next address the Government’s
argument that this case is governed by cases in which
this Court has upheld the constitutionality of
government programs that subsidized speech expressing a
particular viewpoint. These cases implicate a
notoriously tricky question of constitutional law. “[W]e
have held that the Government ‘may not deny a benefit to
a person on a basis that infringes his constitutionally
protected . . . freedom of speech even if he
has no entitlement to that benefit.’ ” But at
the same time, government is not required to subsidize
activities that it does not wish to promote. Determining
which of these principles applies in a particular case
“is not always self-evident,” but no difficult question
is presented here.
Unlike the present case, the decisions
on which the Government relies all involved cash
subsidies or their equivalent....
The federal registration of a trademark
is nothing like the programs at issue in these cases.
The PTO does not pay money to parties seeking
registration of a mark. Quite the contrary is true: An
applicant for registration must pay the PTO a filing fee
of $225–$600....
The Government responds that
registration provides valuable non-monetary benefits
that “are directly traceable to the resources devoted by
the federal government to examining, publishing, and
issuing certificates of registration for those marks.”
But just about every government service requires the
expenditure of government funds. This is true of
services that benefit everyone, like police and fire
protection, as well as services that are utilized by
only some, the adjudication of private lawsuits and the
use of public parks and highways....
C
Finally, the Government urges us to
sustain the disparagement clause under a new doctrine
that would apply to “government-program” cases. For the
most part, this argument simply merges our
government-speech cases and the previously discussed
subsidy cases in an attempt to construct a broader
doctrine that can be applied to the registration of
trademarks. The only new element in this construct
consists of two cases involving a public employer’s
collection of union dues from its employees. But those
cases occupy a special area of First Amendment case law,
and they are far removed from the registration of
trademarks....
IV
Having concluded that the
disparagement clause cannot be sustained under our
government-speech or subsidy cases or under the
Government’s proposed “government-program” doctrine, we
must confront a dispute between the parties on the
question whether trademarks are commercial speech and
are thus subject to the relaxed scrutiny outlined in Central
Hudson Gas & Elec. Corp. v. Public Serv.
Comm’n of N. Y., 447 U. S. 557 (1980) .
The Government and amici supporting its position
argue that all trademarks are commercial speech. They
note that the central purposes of trademarks are
commercial and that federal law regulates trademarks to
promote fair and orderly interstate commerce. Tam and
his amici, on the other hand, contend that many,
if not all, trademarks have an expressive component. In
other words, these trademarks do not simply identify the
source of a product or service but go on to say
something more, either about the product or service or
some broader issue. The trademark in this case
illustrates this point. The name “The Slants” not only
identifies the band but expresses a view about social
issues.
We need not resolve this debate between
the parties because the disparagement clause cannot
withstand even Central Hudson review. Under Central
Hudson, a restriction of speech must serve “a
substantial interest,” and it must be “narrowly
drawn.”
It is claimed that the disparagement
clause serves two interests. The first is phrased in a
variety of ways in the briefs. Echoing language in one
of the opinions below, the Government asserts an
interest in preventing “ ‘underrepresented
groups’ ” from being “ ‘bombarded with
demeaning messages in commercial advertising.’ ” An
amicus supporting the Government refers to
“encouraging racial tolerance and protecting the privacy
and welfare of individuals.” But no matter how the point
is phrased, its unmistakable thrust is this: The
Government has an interest in preventing speech
expressing ideas that offend. And, as we have explained,
that idea strikes at the heart of the First
Amendment. Speech that demeans on the basis of
race, ethnicity, gender, religion, age, disability, or
any other similar ground is hateful; but the proudest
boast of our free speech jurisprudence is that we
protect the freedom to express “the thought that we
hate.”
The second interest asserted is
protecting the orderly flow of commerce. Commerce, we
are told, is disrupted by trademarks that “involv[e]
disparagement of race, gender, ethnicity, national
origin, religion, sexual orientation, and similar
demographic classification.” Such trademarks are
analogized to discriminatory conduct, which has been
recognized to have an adverse effect on commerce.
A simple answer to this argument is
that the disparagement clause is not “narrowly drawn” to
drive out trademarks that support invidious
discrimination. The clause reaches any trademark that
disparages any person, group, or institution. It
applies to trademarks like the following: “Down with
racists,” “Down with sexists,” “Down with homophobes.”
It is not an anti-discrimination clause; it is a
happy-talk clause. In this way, it goes much further
than is necessary to serve the interest asserted.
The clause is far too broad in other
ways as well. The clause protects every person living or
dead as well as every institution. Is it conceivable
that commerce would be disrupted by a trademark saying:
“James Buchanan was a disastrous president” or “Slavery
is an evil institution”?
There is also a deeper problem with the
argument that commercial speech may be cleansed of any
expression likely to cause offense. The commercial
market is well stocked with merchandise that disparages
prominent figures and groups, and the line between
commercial and non-commercial speech is not always
clear, as this case illustrates. If affixing the
commercial label permits the suppression of any speech
that may lead to political or social “volatility,” free
speech would be endangered.
* * *
For these reasons, we hold that the
disparagement clause violates the Free Speech Clause of
the First Amendment. The judgment of the Federal Circuit
is affirmed.
It is so ordered.
Justice Gorsuch took no part in the
consideration or decision of this case.
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