In a significant ruling this week, the U.S. Supreme Court struck down a portion of the Lanham Act that permitted the U.S. Government to bar the registration of “offensive” trademarks.  The provision, often referred to as the “disparagement clause” of the Lanham Act, prohibited the registration of trademarks “which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U. S. C. §1052(a). The case arose from a “dance-rock band’s” application to register its name, “The Slants,” which had been denied by the U.S. Patent & Trademark Office under the disparagement clause because the trademark was considered to be “derogatory or offensive.”

The Supreme Court, in an opinion by Justice Alito, held that the disparagement clause was facially unconstitutional and that it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” The Court specifically rejected three principle arguments raised by the Government, namely, “(1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new ‘government-program’ doctrine.” The Court went so far as to note that even in the event where “some content- and speaker-based restrictions may be allowed”, “’viewpoint discrimination is forbidden.’” It wrote:

Our cases use the term “viewpoint” discrimination in a broad sense . . . and in that sense, the disparagement clause discriminates on the bases of “viewpoint.” To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.

The Supreme Court’s decision will certainly impact trademark cases and filings going forward, including a long-running challenge to several trademarks owned by the NFL’s Washington Redskins franchise, which a U.S. District Court in Virginia cancelled in 2014 based upon the disparagement clause (that case is currently on appeal in the U.S. Court of Appeals for the Fourth Circuit).  A copy of the Supreme Court’s decision can be read here