On June 19, 2017, the United States Supreme Court held that a portion of the first clause of the U.S. Trademark Law (the “Lanham Act”), which is commonly known as the disparagement clause, was facially unconstitutional under the First Amendment. Specifically, the Supreme Court found that a denial of registration of a mark under the disparagement clause of the Lanham Act, which prohibits registration of a mark that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead,” violates the Free Speech Clause of the First Amendment. The ruling, while rather shocking as to its reach, came as no surprise to the trademark community. This decision now casts a shadow on the remainder of what is called Section 2(a)1 and opens the door to further expansion of our understanding of speech.
This litigation began when Mr. Simon Shiao Tam, a humble guitar player in a band made up of Asian-American men that called itself The Slants, pushed to change the law. Mr. Tam’s fight began at the Trademark Office in 2010, when he filed an application to register the name of his band as a trademark.2 In 2011, Mr. Tam’s first application to register the band’s name as a trademark was denied under the disparagement clause. After Mr. Tam refiled a second application for the mark THE SLANTS and was rejected on the same grounds, he appealed the rejection to the Trademark Trial and Appeal Board, the Federal Circuit Court of Appeals, and ultimately the Supreme Court.3