This week’s Matal v. Tam (formerly Lee v. Tam) Supreme Court ruling serves as a reminder that free speech is a two-way street. It also suggests the value of a sympathetic litigant, at least in terms of public response.
Many rallied behind Simon Tam and his rock band, The Slants. The band members, who are all-Asian American, sought to reclaim and diffuse a historically derogatory term by naming their band “The Slants.” The band first tried to register THE SLANTS with the Trademark Office in 2010. The Office rejected the application under the disparagement clause of the Lanham Act. 15 U.S.C. 1052(a). The band appealed to the Trademark Trial and Appeal Board, and later to the Federal Circuit, which ultimately led to review by the Supreme Court.
The resulting narrative told the story of a group of young musicians pushed out by a bureaucratic system and an antiquated law dictating morality. Tam and his band were the good guys. There was no public outcry calling for the band to change its name. They were not viewed as insensitive or bigoted, at least in part because Tam and the other band members are Asian American and thus belong to the group presumably disparaged by the term. For many, it was easy to rally behind the argument that The Slants have a First Amendment right to obtain federal trademark protections for their band name. The Supreme Court’s decision that “the disparagement clause violates the Free Speech Clause of the First Amendment,” thus removing The Slants’ block to registration, was a well-received public victory. Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *20 (U.S. June 19, 2017).
However, as many have since pointed out, this decision was a win not only for The Slants, but for anyone seeking federal registration of an otherwise disparaging mark.
In 2015, a federal district court affirmed the USPTO’s cancellation of THE REDSKINS registered trademarks. At the time, the district...
