Another recent intellectual property decision by the Supreme Court concerned the intersection of the Free Speech Clause of the First Amendment to The Constitution and the “disparagement clause” within the Lanham Act. The Free Speech Clause of the First Amendment provides that “Congress shall make no law … abridging the freedom of speech.” The “disparagement clause” of the Lanham Act was intended to prevent the registration of trademarks that disparage racial or ethnic groups.

In Matal v. Tam, 582 U.S. ___ , 137 S. Ct. 1744, 198 L. Ed. 2d 366 (June 19, 2017), the Supreme Court considered whether the “disparagement clause” could be used to prevent a member of the band “The Slants” from registered the band name as a trademark. The name is considered to be a derogatory term for persons of Asian descent. However, the band is made of persons of Asian descent. They chose the name in an effort to “’reclaim’ the term and drain its denigrating force.”

Initially, the Supreme Court had determine whether the “disparagement clause” applied to groups of peoples, as opposed to individual persons. After determining that it did, the Court concluded that the “disparagement clause” violated the First Amendment because trademarks are not government speech, a form of government subsidy, or subject to a newly asserted “government-program” doctrine.

This case is relevant to the ongoing effort to persuade the Washington Redskins to change their team name. For decades, various Native American advocacy groups with help from the U.S. government, at times, have been battling the professional football team within the courts and within the United States Patent and Trademark Office administrative tribunal system using the “disparagement clause” of the Lanham Act as a basis for cancelling the team’s trademark. The Matal decision appears to be the last word on the issue.

The case is also the basis for a recent decision by the United States Court of Appeals for the Federal Circuit that invalidated another similar provision in the Lanham Act directed to immoral or scandalous marks. See In re Brunetti, __ F.3d ___ (Fed. Cir. December 15, 2017)(slip op.). The Brunetti court held that the Lanham Act’s bar against immoral or scandalous marks is unconstitutional because it violates the First Amendment using similar reasoning as the Supreme Court used in the Matal decision.