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Abstract

The United States Supreme Court's unanimous ruling in Matal v. Tam is a landmark decision regarding the intersection between free speech and trademark law. Addressing whether trademarks can legitimately be barred from federal trademark protection under the Lanham Act based solely on their possible disparaging content, the litigation involving an Asian-American band that sought to register the name, "The Slants," brought this important interplay into stark relief. Writing in bold strokes, Justice Alito's opinion holds that the Lanham Act's prohibition on disparaging marks, 15 U.S.C. 51052(a), 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." Justice Kennedy's concurring opinion (which was joined by three other Justices) also broadly states: "the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties."'

The Court's categorically worded decision will have important implications for both the First Amendment and for trademark law for years to come. The question is thus how far does the Tam decision reach, and whether it will upend major aspects of trademark law. This article provides an analysis of the implications of Tam for trademark law, both in terms of eligibility for registration and in terms of the scope of trademark protection. The article takes the view that Court correctly found the prohibition on registration of disparaging marks to be contrary to fundamental principles of free speech, and that its analysis should apply directly to the similar blanket prohibitions on registering immoral or scandalous content. The article suggests ways in which these provisions could be revised or narrowed to satisfy First Amendment scrutiny.

In contrast to the Lanham Act provisions that are now plainly unconstitutional, other prohibitions found in the Lanham Act, which preclude deceptive, confusingly similar, and functional marks, can be defended based upon traditional trademark principles that are consistent with robust First Amendment protections for free speech. This article contends that First Amendment principles do allow for most of the statutory limitations placed on trademark registration, and that - contrary to the predictions of some commentators - the ruling will not cause any significant disruption in the large majority of trademark cases. It is true, however, as at least one court has now held, that the Lanham Act rules against immoral, scandalous, and disparaging marks must be completely reevaluated based on free speech considerations.

Finally, the article addresses whether Tam might eventually alter the extent to which the scope of protection trademark owners receive based on their ability to prevent confusingly similar uses and to prevent dilution by tarnishment or blurring might be subject to challenge under the First Amendment. The article finds that claims by trademark owners based on consumer confusion or dilution should generally be unaffected by the Supreme Court's decision in Tam.

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