Supreme Court Holds a Portion of Section 2(a) of the Lanham Act Unconstitutional

In Matal v. Tam,¹ the Supreme Court held that a portion of Section 2(a) of the Lanham Act² prohibiting the federal registration of potentially disparaging trademarks and service marks violated the Free Speech Clause of the First Amendment. The decision is the first opinion by the Court since 1879—and only the second in the history of the republic—to invalidate a federal intellectual property statute as unconstitutional.³ It marks a departure from the Court’s traditional reliance on Central Hudson Gas & Electric Corp. v. Public Service Comm’n of New York⁴ when determining whether a governmental regulation of commercial speech violates the Free Speech Clause. The eight justices participating in the case⁵ agreed the prohibition constituted a viewpoint-based government restriction, but they divided evenly on the constitutional significance of that consideration. Whatever the resolution of that division ultimately may be, though, the outcome of the litigation is unlikely to affect the validity of most (but not all) of the Lanham Act’s other prohibitions on registration.

Section 2(a) of the Lanham Act

Section 2(a) of the federal Lanham Act bars the registration of several categories of trademarks and service marks, including those “consisting or comprising immoral . . . or scandalous matter, or . . . which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”⁶ The ban on the registration of immoral and scandalous marks was first enacted as Section 2(a) of the Trademark Act of 1905, and congressional disapproval of potentially disparaging marks became a part of federal law in 1946 as part of the federal Lanham Act. As this provenance suggests, litigation concerning the registrability of immoral, scandalous, and potentially disparaging marks under Section 2(a) is not a recent development in trademark jurisprudence.⁷

The language from Section 2(a) quoted above has two distinct prongs, namely, whether a mark is “immoral or scandalous,” and whether a mark “may disparage”; only the latter of these prohibitions was at stake in Tam. The two bans are closely related, and it is possible for a mark to be rejected for violating both.⁸ In addition, when a challenge is brought to an existing registration under these prongs of Section 2(a), the challenger must demonstrate the registration “was obtained” in violation of the statute, meaning that the challenger’s evidentiary showing must focus on whether the mark in question was scandalous, immoral, or potentially disparaging as of the date it was registered,⁹ rather than on the date on which the merits of the challenge are decided.

Nevertheless, there are significant differences in how the USPTO and courts traditionally have interpreted these two prongs of Section 2(a). One is that, although the challenger to the registrability of a mark under the first prong must demonstrate actual immorality or scandal to prevail, a mere showing of potential disparagement will suffice under the second prong. Another is how offense under the two prongs is measured: (1) where scandal and immorality are concerned, “whether the mark consists of or comprises scandalous matter must be determined from the standpoint of a substantial composite of the general public (although not necessarily a majority), and in the context of contemporary attitudes, keeping in mind changes in social mores and sensitivities”;¹⁰ but (2) “if [the mark’s] meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.”¹¹ A mark therefore may be unregistrable under the “may disparage” prong of Section 2(a), even if the general public (as opposed to the referenced group)...