Matal v. Tam and the Government's Lost Power to Ban Offensive Trademarks

Somewhere in a federal office, for seventy years, a government employee had a job that sounds like satire and was not: reading proposed brand names and deciding whether they were too rude for the American marketplace.

Read that again. A bureaucrat with a statute and a dictionary was given the power to tell the citizens of a free country which words they could attach to their own businesses. And the strangest thing about the story is that it took until 2017 for the Supreme Court to say what the First Amendment should have told us all along.

This is the case of Matal v. Tam, and it is a better conservative victory than it looks. It involved an Asian American rock band, a federal statute and an eight-nothing result. It also helped decide whether the government may grade the words you use for your business, and whether your brand, or your church's, or your magazine's, is safe from the next administration's taste.

The law that was struck down

A trademark is a word, name, symbol or design that identifies the source of goods or services. It is how you know the product in your hand is the one you meant to buy. The federal registration system is run by the Patent and Trademark Office, and its rules come from the Lanham Act, passed in 1946.

Registration is valuable. It gives nationwide priority, a legal presumption of ownership, and the right to sue infringers in federal court. It is not required to use a mark, but a business without registration is working at a disadvantage.

Section 2(a) of the Lanham Act, codified at 15 U.S.C. § 1052(a), told the office to refuse registration to a mark that "consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." Two parts of that sentence matter for this post. The disparagement clause barred marks that disparage. The scandalous clause barred marks that were immoral or scandalous.

Read the disparagement clause again, and ask yourself who gets to decide what disparages "beliefs." Under the statute, the examiner did, and an applicant who disagreed could appeal to an administrative board. A person could be refused the use of the government's registry because an official thought a word was insulting to somebody.

The band and the name

Simon Tam is the founder of a dance-rock band that performs as The Slants. Tam is Asian American, and the name was chosen deliberately: he and his bandmates took a term that has been used as a slur against people of Asian descent and adopted it for themselves, a kind of reclamation that has a long history in many communities. The band's songs and performances addressed Asian American identity and discrimination, and the name was meant to take ownership of the term.

Tam applied to register the band's name. The Patent and Trademark Office refused, on the ground that the name was likely to disparage persons of Asian descent. The office's reasoning, in a nutshell, was that a substantial composite of the people the term referred to would find it offensive. The decision was upheld by the agency's board. Tam took the case to the Federal Circuit, which sitting en banc in 2015 held the disparagement clause unconstitutional. The government appealed to the Supreme Court. Its name was in the caption because the Director of the Patent and Trademark Office was the official defendant; Joseph Matal was the interim director at the time.

Notice the irony. The government's argument was that the clause protected minorities from offensive language. And the first person it silenced was a member of the minority, who was using the language to make a point about his own community. A rule meant to shield a group from insult was applied to a man in that group, over his objection.

The decision

The Court decided Matal v. Tam on June 19, 2017. Justice Samuel Alito wrote the opinion. The judgment was unanimous, with all eight participating justices agreeing that the disparagement clause violated the First Amendment. Justice Gorsuch had not yet joined the Court and took no part.

The justices did not agree on every step of the reasoning. Alito's opinion held in part that trademarks are private speech rather than government speech, and in the rest was joined by only some. Justice Kennedy wrote a concurrence, joined by Justices Ginsburg, Sotomayor and Kagan, that went to the heart of the matter, and Justice Thomas wrote separately. But the headline is clean: the clause could not stand.

Premise one: trademarks are private speech

The government argued that registered trademarks are government speech, which the government may choose freely. If that were so, it said, the government could decline to endorse a message just as it could decline to put a message on a government billboard. The Court rejected that. If trademarks were government speech, the government would be speaking in the voices of thousands of private brands, and it would be responsible for what they say, including, from soft-drink slogans to political ones. The Court noted that the government does not create or edit the marks it registers; it only says yes or no. And the registration office, if it were the speaker, would be endorsing contradictory messages at once.

The Court distinguished earlier cases where the government itself was speaking, such as the monuments in a public park in Pleasant Grove City v. Summum (2009) and the specialty licence plates of Walker v. Texas Division, Sons of Confederate Veterans (2015). A trademark is a private party's word, and the registry is a procedure, not a pulpit.

Premise two: the clause discriminates on viewpoint

This is the core. The disparagement clause allowed registration of marks that praised, and refused registration of marks that insulted. The Court observed that a party seeking a mark could use positive terms about a person, an institution or a belief and be approved, and could use negative ones about the same person, institution or belief and be refused.

That is the textbook meaning of viewpoint discrimination. In his opinion, Alito wrote that giving offence is a viewpoint, and he wrote this memorable line: "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 final words are Justice Holmes's, from a dissent in a 1929 case. They have become a cornerstone of the Court's approach.

Alito also wrote, plainly, that the idea that the government may restrict speech expressing ideas that offend "strikes at the heart of the First Amendment." And he rejected the government's argument that it could stand in for the interests of a generic audience by blocking offensive messages, observing that this argument would justify banning virtually any speech.

Premise three: the clause is not saved by any other interest

The government offered two justifications. One was that it had an interest in preventing underrepresented groups from being bombarded with demeaning messages in the market. The Court said that is just another way of saying the government may suppress speech that offends, and offence is not a legal harm the First Amendment lets the government prevent. The other was that the clause advanced the cause of orderly commerce. The Court said the clause was far too broad, since it reached many forms of speech with nothing to do with trade.

The result: a rule that let the government refuse registration on a bare finding that a mark is insulting could not survive.

Brunetti and the scandalous clause

Two years later the Court finished the job. In Iancu v. Brunetti, decided on June 24, 2019, Erik Brunetti sought to register his clothing brand, whose name is a vulgar word, and the office refused it as "scandalous" or "immoral."

Justice Kagan wrote for a 6-3 Court. She applied Tam: the "immoral or scandalous" bar was also viewpoint discrimination, because it let the office register marks consistent with prevailing moral ideas and refuse those that offended them. The clause approved of "good" messages and rejected "bad" ones. The Court struck it down. Justices Roberts, Breyer and Sotomayor each wrote separately, partly concurring and partly dissenting, in effect suggesting that a narrower statute against truly vulgar or obscene marks might survive. The majority did not say so.

Together, the two cases mean something simple: the government cannot use the trademark registry as a tool to police taste or manners, in either direction.

The Washington football case

You cannot tell this story without the dispute that sat in the background. For years, the question of whether a professional football team in the nation's capital could keep a federal trademark on a name that many Native Americans considered offensive had been working its way through the administrative process.

In 2014, the Trademark Trial and Appeal Board cancelled the team's registrations under the disparagement clause, in a case brought by a group of Native American petitioners. The team appealed to a federal court in Virginia, which affirmed the cancellation in 2015, and the case went to the Fourth Circuit. After Tam, the legal basis for the cancellation was gone. The Fourth Circuit's case was effectively over before it was decided.

That is the part conservatives should find ironic. A good many people who cheered the 2014 cancellation as a victory for sensitivity would find, in 2017, that the logic was the same logic as the one used against the Asian American band, and that the government's tool for punishing the team was the same tool that had been used against the minority musician. The principle that protected Tam protected the team.

The team's name eventually changed anyway. In July 2020, under pressure from sponsors, the club announced that it would retire the name. That is how the story should have ended all along: not with a bureaucrat's ruling, but with a decision by the owners, the customers and the market. A free society works things out in public, and the pressure came from the people who buy the tickets and pay the sponsors, not from a federal registry.

The strongest objection

An honest reader will want to hear the other side. Here it is at full strength.

The government is not banning anything. A band can still call itself whatever it likes and play whatever it likes. All the clause does is deny a government benefit, registration, to marks that disparage. The government is not obliged to subsidise insults. And the harms are real: slurs are weapons, and a federal stamp of approval on a slur sends a message. Why should the government be required to give a registered mark to a hateful word?

Answer in numbered points.

1. Denying a benefit on viewpoint grounds is still viewpoint discrimination. The Court has long said that the government may not condition a benefit on the abandonment of a constitutional right, or deny a benefit because it dislikes the message. The benefits here are not trivial: registration carries real legal advantages, and the denial burdens the applicant's speech.
2. Registration is not endorsement. The Court held that trademarks are private speech. When the office registers a mark, it does not say the government agrees with the words, any more than a business licence says the government endorses the business.
3. The rule cuts both ways. The same clause that excluded the band could exclude a conservative organisation whose name offended an official's sense of "beliefs" or "institutions." The statute protected "beliefs" and "institutions" from disparagement. Imagine an examiner in a hostile administration deciding that a mark criticising a government programme or a religion's critics disparaged a belief. A conservative who likes the clause when it is aimed at an offensive band must like it when it is aimed at an offensive church.
4. Offence is not a legal harm. The law punishes threats, fraud, incitement and defamation. It does not punish being insulted, because the category is limitless and its boundary is set by whoever is offended or whoever is in charge.

I would add a point about humility. A federal examiner reading names to decide which ones disparage a "substantial composite" of some group is being asked to guess at the feelings of millions of strangers. The Tam case itself shows how well that works: the examiner concluded that a name chosen by an Asian American to speak to Asian Americans disparaged Asian Americans. If the machine cannot get a clear case right, it has no business running the registry of ideas.

What it means for conservatives

For conservatives the case is not only a principle but a shield, and I would like to be plain about it.

Brands carry opinions. A Christian bookseller, a gun-rights group, a pro-life nonprofit, a political podcast: any of them may want a name that some officials, some day, might label disparaging. The disparagement clause, applied by a different administration, would have been a tool for that. After Tam, it is gone, and the applicant's viewpoint is no longer the examiner's business.

This is the same logic that protected a Klansman in Brandenburg v. Ohio Protected a Klansman's Speech, and It Protects Yours Too, and that protected parody in Hustler v. Falwell Protected Parody, and Conservatives Benefit From It Now. Each decision is uncomfortable the day it is issued and useful the day a different government takes office. For related reading on how the government's power to shape speech through the back door gets tested, see NRA v. Vullo and the Unanimous Rule Against Government Jawboning. For a look at what happens when a company itself decides to use its brand as a platform, see Corporate Activism Breaks the Deal Between a Company and Its Customers.

And one wry observation. For seventy years the federal government ran a department of brand-name etiquette, staffed by people with titles, and the Constitution had to send it home in a unanimous decision. Somewhere an examiner is no doubt relieved to learn that ranking the nation's brand names by offensiveness was never his job to begin with. The Court has told him he may take up a hobby instead, preferably one that does not involve grading other people's vocabulary.

What the cases do not do

A word of caution, so that no one overreads. Tam and Brunetti do not make every mark registrable. Marks that are confusing, merely descriptive, deceptive or likely to be mistaken for another company's are still refused under other provisions. Fraud is still fraud. The cases removed the government's power to refuse a mark because of the message it conveys, and nothing more. The ordinary machinery of trademark law, whose purpose is to tell consumers who made a product, keeps running.

Check the text for yourself. The Lanham Act is in the U.S. Code, and the opinions are free on the Supreme Court's website. Reading Alito's opinion in Tam is a short, clear lesson in why the First Amendment protects the speaker you would least like to defend.

The case in brief

1. The Lanham Act's disparagement clause let the government refuse registration to trademarks that disparage persons, institutions or beliefs, and it was used against an Asian American band, The Slants.
2. In Matal v. Tam (2017) the Court, led by Justice Alito, held unanimously that the clause violates the First Amendment, because trademarks are private speech and the clause discriminates on viewpoint.
3. Iancu v. Brunetti (2019) applied the same logic to strike the "immoral or scandalous" clause.
4. The principle was that offence is not a legal harm, and a registry that rewards praise and punishes insult would be a tool for any administration against any viewpoint.
5. The Washington football team's name was settled by owners, sponsors and customers, which is how a free society ought to resolve it.

What you can do: read Justice Alito's opinion in Matal v. Tam on the Supreme Court's website, then tell a friend who wants the government to regulate offensive speech what the Court said in plain words.