The Registrability of Offensive Marks: The Matal v Tam Case

The Slants are an all-Asian-American dance-rock band from the United States. Sometime in March of 2010, the Slants’ creator, Simon Tam (Tam), filed their first application to register “The Slants” as a trademark, which was denied. The band unsuccessfully appealed the decision of the US Patent and Trademark Office (PTO).

Tam applied for a second time in 2011 to register the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band,” as the band had been doing so since 2006. The examiner declined to register the mark because it was considered insulting to “people of Asian descent.” The examiner determined that the mark was likely disparaging to people of Asian descent, explaining that the word “slants” had a “long history of being used to deride and ridicule a physical characteristic” of Asian people.

After that decision, Tam decided to appeal the determination before the Federal Circuit.

The Federal Circuit had to determine whether or not the disparaging provision of the Lanham Act is unconstitutional and should therefore be voided. The court held that the Lanham Act's disparaging provision is unconstitutional for various reasons and that Tam should be granted trademark protection on THE SLANTS.

The court determined that the Lanham Act was viewpoint-based discriminatory because whenever the government chooses to deny trademark protection to a mark, it is doing so because of the message the mark conveys. The US government tried to defend their position before the Federal Circuit by saying that they should be able to deny protection to the most “vile” racial epithets and images; however, the Federal Circuit said that “When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint.”

The Lanham Act states that a mark can be refused to be registered if it

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

The PTO appealed the decision to the United States Supreme Court. On the 19th June 2017, the Supreme Court delivered judgment in favour of Tam, voting unanimously to affirm the lower court. The opinion stated “The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech.” The court ruled that the government cannot ban expression merely because it is offensive.

Potential Implications of Matal v Tam

Since the Supreme Court held that this ban on disparaging trademarks violated the First Amendment as an unconstitutional restriction on free speech, there has been no clear guidance on whether similar trademark subject prohibitions included in the Lanham Act also violate the First Amendment as an unconstitutional abridgement of speech.

So does that mean that all marks that were deemed to be disparaging can now be registered?

A small group of companies and individuals in the US have applied to register racially charged words and symbols for their products, including other racial slurs and the swastika. If the applications follow through, such products as energy drinks, sweatshirts and fragrances could be branded with racial slurs.

In South Africa, trademarks can only be registered if they are not offensive, contrary to the law or good morals, or deceptive by nature or way of use. South African trademark law does not specifically refer to the morality of trademarks, but the Trade Mark Act uses terms such as “offensive” and “contra bonos mores”. There is no clear and concise definition given to the word “offensive”. If a case like Matal v Tam had to be heard in South Africa, I think the outcome would have been very much different.

Nerd at heart