In Matal v. Tam, the United States Supreme Court struck a provision of the Lanham Act that has been used to deny federal registration of trademarks deemed disparaging to “persons, . . . institutions, beliefs, or national symbols.” In a unanimous* opinion issued on June 19, 2017, the Court held that the Act’s disparagement clause, in force since 1946, violates the Free Speech Clause of the First Amendment to the Constitution.
The Supreme Court’s opinion marks a triumph more than seven years in the making for The Slants, an all Asian-American dance rock band, and the band’s lead singer, Simon Tam. In 2010, Tam applied to the United States Patent & Trademark Office (the USPTO) to register THE SLANTS as a trademark. A USPTO trademark examiner rejected his application.
Tam persisted, however, and his case made its way through the Trademark Trial and Appeal Board, the United States Court of Appeals for the Federal Circuit, and the Supreme Court. Ultimately, Tam’s dispute with the government generated the filing of more than 30 amicus briefs, by groups ranging from the Washington Redskins to the San Francisco Dykes on Bikes Women’s Motorcycle Contingent.
Tam Seeks to ‘Reclaim’ an Ethnic Slur
Tam chose the name “The Slants” to “reclaim” and “take ownership” of stereotypes about Asian ethnicity. As the Supreme Court’s opinion explained, the band “draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes.”
During a recent visit to Bradley’s Nashville office for a Nashville Bar Association event, Tam recalled an incident in grade school in which he attempted to scare away a bully by striking a karate pose, even though he did not practice karate. Tam’s bluff succeeded, and he walked away unharmed. From this episode, Tam said he learned that by embracing an offensive stereotype, he could diminish its potency and thus its ability to disparage his ethnicity. He described this as “social justice achieved through linguistic change.”
The USPTO did not see it that way.
USPTO’s Refusal to Register THE SLANTS
The USPTO denied Tam’s application to register THE SLANTS on the ground that it disparaged Asian-Americans. The Lanham Act, at 15 U.S.C. § 1052(a), prohibits federal registration of marks that “disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” To fall within this statute, a mark must meet two requirements: Its “likely meaning” must refer to...
