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Law on Offensive Trademarks Violates the First Amendment

On Monday, the United States Supreme Court affirmed the judgment of the Federal Circuit and ruled that the disparagement clause, i.e. section 2(b) of the Lanham Act, violates the Free Speech Clause of the First Amendment of the US Constitution. The trademark case, Matal v Tam,  stems from an Asian-American rock group’s efforts to register its name, “The Slants”, as a trademark in the US for “entertainment, namely, live performances by a musical band.” The US Patent and Trademark Office (“USPTO”) denied the application  under the disparagement clause prohibiting the registration of trademarks that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”

In an unanimous decision, the Court held that the disparagement clause violates the First Amendment. The First Amendment protects speech expressing offensive ideas. Quoting from Justice Oliver Wendell Holmes Jr., the Court stated at page 25:

Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”

Further, the Court held that the disparagement clause was far too broad to only restrict  trademarks that support invidious discrimination.

This decision raises interesting questions for owners of Canadian trademark rights. For a Canadian perspective on offensive trademarks, read Stephanie Melnychuk’s article here.


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