Background
Simon Tam was the founder of an Asian-American dance-rock band called The Slants — a name chosen deliberately to reclaim a racial slur and celebrate Asian-American identity. The USPTO refused to register THE SLANTS under 15 U.S.C. § 1052(a), the Lanham Act provision that prohibits registration of marks that “consist[] of or comprise[] 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.” The PTO found THE SLANTS to be disparaging to persons of Asian descent. Tam appealed, arguing the disparagement bar violated the First Amendment.
The case was significant because the disparagement bar was also at the center of the Washington Redskins trademark dispute, in which the Trademark Trial and Appeal Board had cancelled the Redskins’ trademark registrations under the same provision.
The Court’s Holding
The Supreme Court unanimously held that the Lanham Act’s disparagement bar violated the First Amendment. While the justices wrote separately on some questions (particularly on whether trademark registration is government speech or a government subsidy program), all eight participating justices agreed that the disparagement bar unconstitutionally discriminates on the basis of viewpoint. The PTO allowed registration of marks expressing positive views about groups while refusing marks expressing negative views about the same groups — a quintessential form of viewpoint discrimination that the First Amendment prohibits regardless of whether the government is acting as a regulator or as a subsidy grantor.
The Court rejected the argument that trademark registration is “government speech” not subject to First Amendment scrutiny — finding that registered trademarks are private speech that the government facilitates, not government speech that the government controls.
Key Takeaways
- The Lanham Act’s disparagement bar — prohibiting registration of marks that disparage persons, groups, or institutions — is unconstitutional viewpoint discrimination in violation of the First Amendment, regardless of whether the disparaged group is a racial, ethnic, national, or other category.
- Trademark registration is not government speech: it is a government benefit program that facilitates private speech, and the government cannot condition access to that program on compliance with viewpoint-based restrictions on expression.
- The ruling led directly to the Federal Circuit’s and Supreme Court’s subsequent decision in Iancu v. Brunetti (2019), which extended the same reasoning to strike down the “immoral or scandalous” bar to trademark registration.
- The Washington Redskins’ trademark registrations were restored following Tam — the same doctrine that protected The Slants’ registration rights applied equally to trademarks that many found offensive or harmful, illustrating that viewpoint neutrality in First Amendment doctrine applies regardless of the specific viewpoint at issue.
Why It Matters
Matal v. Tam was a landmark First Amendment decision that fundamentally changed trademark law by establishing that the government cannot condition trademark registration benefits on viewpoint neutrality. The ruling had immediate practical effects: it enabled The Slants to register their trademark, restored the Washington Redskins’ registrations, and opened the trademark register to marks that had previously been rejected as disparaging to various groups.
More broadly, Tam established an important constitutional principle: when the government creates a benefit program (like trademark registration) that involves evaluating the content or expression of applicants’ marks, it cannot discriminate based on viewpoint without violating the First Amendment. This principle was extended in Brunetti (2019) to the immoral and scandalous bar, and continues to shape debates about the scope of government authority to regulate expressive trademarks through the registration system. The decision generated controversy among those who argued it would open the trademark register to harmful speech, while First Amendment advocates hailed it as a necessary check on government censorship through trademark denial.