By: Ariane Monaco
“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.’”- Justice Oliver Wendell Holmes Jr.
Trademarks can be any form of expression such as a word, symbol, or device used to help identify products and brands from competing products in order to indicate the source of the goods, even if the source is unknown. But what happens when that trademark identifies a specific group of individuals in a derogatory manner?
The Lanham Act of 1946 governs trademark law in the United States. The Act protects trademarks and prohibits certain activities such as trademark infringement, trademark dilution and false advertising. In addition, the Act, through its disparagement clause, refuses to register trademarks that insinuate a derogatory nature to a specific group of people. The disparagement clause points out instances where a trademark should not be registered, such as when the trademark “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.”
On June 2017, the Supreme Court in Matal v. Tam ruled the disparagement clause of the Lanham Act unconstitutional because it violated the First Amendment’s Freedom of Speech Clause. In Matal, the Patent and Trademark Office (PTO) denied the application of a rock band group, “The Slants” because of its derogatory reference to Asian persons. The PTO found the term to fall under the disparagement clause prohibiting the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” However, the Court denied the PTO’s decision, and ruled that the First Amendment allows the trademark to be registered. The Court rested this opinion on the fact that trademarks are private speech, not government speech, and therefore, cannot infringe on individuals’ right to freedom of speech. Government has stricter rules and limitations on speech than private individuals; so, even though the trademark is registered by the government, it does not mean it is government speech. With that being said, if the trademark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory. Once a mark is registered, the PTO is not authorized to remove it from the register unless a party moves for cancellation, the registration expires, or the Federal Trade Commission initiates proceedings based on certain grounds.
With Matal invalidating the disparagement clause, the Court emphasized its value to the protection of free speech, reviving a history of prevalent issues. Recently, the issue of team mascots has been widely publicized in terms of offensive trademarks and the disparagement clause. A relatively known case involves the National Football League and the professional football team for Washington D.C. known as the Washington “Redskins”, a slang and objectively offensive reference to Native Americans. The plaintiffs in this case sought to cancel six provisions of the registered trademarks of the Washington Redskins professional football team because they “‘may disparage’ a substantial composite of Native Americans.” They argue this based upon section 2(a) of the Lanham Act that exempts trademarks to be registered when they may disparage anyone. Facing this issue since 1992, the court ruled the federal trademark registration program is government speech and is, therefore, exempt from First Amendment scrutiny. However, because of the recent decision of Matal that held the opposite —saying trademark registration is private speech— the issue is again revisited.
The Court in Matal reinforced the First Amendment into trademark law by emphasizing that even though speech is hateful, there is protection and freedom to express things we hate. A powerful Supreme Court decision in this lineage is R.A.V. v. City of St. Paul. In R.A.V., the Court held an ordinance, which prohibited bias-motivated disorderly conduct because it conflicted with First Amendment rights, invalid. The Bias–Motivated Crime Ordinance prohibited the display of a symbol which one knows or has reason to know “arouses anger, alarm or resentment in others on the basis of race, color, creed, religion or gender.” This is another example of the government reinforcing the value of the First Amendment. The government is not allowed to regulate based on either hostility or favoritism of the underlying message. This is the basic idea that speech, whether good or bad, cannot be regulated just because it goes against someone’s viewpoints of a particular person or thing.
There is a two-part test to determine whether a trademark is disparaging: the first part determines the likelihood and meaning, and if that meaning refers to identifiable people, institutions beliefs or nation symbols then the second part determines if the meaning may be disparaging to a substantial composite of the referenced group. The first part considers the meaning of the matter in question by looking at dictionary definitions and the relationship of the matter to the other elements in the mark, the nature of the goods or services, and how the mark is used in the marketplace dealing with goods or services. If the meaning is determined to refer to identifiable persons, institutions, beliefs or national symbols, then the examiner moves to the second part of the test: if the meaning may be disparaging to a substantial composite of the referenced group. A majority of the referenced group does not need to be established because only a substantial composite is enough to make out a prima facie case for a proposed mark to be disparaging. If so, then the burden is on the applicant to prove that the trademark is not disparaging. The PTO recognizes that “[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.”
In response to the courts holding in Matal, the trademark gates flooded with applications to register racially connoting words. This is a response to control the derogatory marks in order to make sure no one with racist or bad intentions is able to register it. One man who registered the trademark for the word “swastikas” reasoned that “if we can own the brand, we will be able to control the sale of the brand and the use of the brand as well.” However, in order to have a registered trademark, one needs to sell something associated with it. The theory behind this is that imprinting t-shirts and blankets with the symbol and charging an expensive amount in order to buy the product will discourage people from buying the product and, more importantly, being able to reproduce the disparage mark. However, it is only possible to register a trademark if the individual can show that the trademark can be associated to one’s own product. This can be a problem because some of these racist trademarks, such as the swastika, and the history associated with them are so ingrained in people’s minds already that there is little chance that anyone would associate the symbol to the product. Even though registering a trademark does not prevent other groups from using the term; the registration provides substantial legal benefits and makes it easier to stop others from using the phrase that is likely to cause confusion in the marketplace. 
The ruling in Matal does not stop the debate, but possibly raises more issues. The Court’s holding has strayed from the norm of past decisions. Past decisions have avoided constitutional analysis of trademark laws, but all of the Justices have agreed that constitutional review is necessary in order to balance the government’s interest in regulating trademarks against the right to freedom of expression. It will be interesting to see future issues arising because of the recent decision, especially when it comes to other provisions in the Lanham Act. One of the provisions of the Act that has a strong possibility of being addressed is the part of the law that prohibits registration of trademarks based on immoral or scandalous marks. Because free speech is protected when it comes to trademark expression, the First Amendment poses a strong argument to invalidate this provision as well. Not to mention, the First Amendment already protects profanity, sexual images, and other vulgar terms with the exception of obscene speech. These types of expression can similarly offend some consumers, just like disparaging terms.”
There are arguments on certain trademarks that have been registered, yet should arguably remain in the public domain. Some of these types of the trademarks are descriptive terms, common slogans, colors, product attributes, and other “nontraditional marks.” Before these symbols became trademarks, they had a strong role within the marketplace. These laws can have a chilling effect on use of this expression, and there may not be a sufficient constitutional justification for awarding these types of exclusive trademark rights after Matal.
 Matal v. Tam, 137 S. Ct. 1744, 1764 (2017).
 Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 453 (E.D. Va. 2015).
 15 U.S.C.A. § 1051.
 Roger Leroy Miller, Business Law Today: The Essentials 56 (10th ed. 2017).
 15 U.S.C.A. § 1052(a).
 Matal, 137 S. Ct. at 1765.
 Matal v. Tam, 137 S. Ct. 1744, 1765 (2017).
 Pro-Football, 112 F. Supp. 3d at 447.
 Id. at 454.
 Law on Offensive Trademarks Violates the First Amendment, Oyen Wiggs (Oct. 1, 2017) https://www.patentable.com/law-offensive-trademarks-violates-first-amendment/ (quoting Justice Oliver Wendell Holmes Jr at 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”).
 R.A.V. v. City of St. Paul, Minn., 505 U.S. 377 (1992).
 Id. at 386.
 Laura Hunter Dietz, J.D., Construction and Application of Trademark Registration Prohibition on Disparaging Marks Under 15 U.S.C.A. § 1052(a), 15 A.L.R. Fed. 3d Art. 8 (2016).
 Substantive Examinations of Applications, Trademark Man. of Examining Proc. § 1203.03(b)(i) (Apr. 2017), https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e1.html.
 Matal, 137 S. Ct. at 1753–54.
 Alisa Chang, After Supreme Court Decision, People Race To Trademark Racially Offensive Words, NPR (Oct. 1, 2017), http://www.npr.org/2017/07/21/538608404/after-supreme-court-decision-people-race-to-trademark-racially-offensive-words.
 Lisa P. Ramsey, The First Amendment Protects Offensive Trademarks, The Regulatory Review (July 25, 2017), https://www.theregreview.org/2017/07/25/ramsey-first-amendment-protects-offensive-trademarks/.
 See id.