By Lisa Soronen

Potentially offensive names, even those considered racial slurs—in this case an Asian band called The Slants—have been granted First Amendment protection by the U.S. Supreme Court.

State and local governments don’t particularly care that trademarks aren’t government speech. But they do care about the breadth of the government speech doctrine because government speech is not protected by the First Amendment, meaning governments can say what they want and exclude messages with which they disagree.

One small caveat for state legislatures: Most states have adopted the Model State Trademark Act, which bars state trademark registration on the same basis as Section 2(a) of the Lanham Act.

State legislatures should review their trademark laws to determine if they should be revised in light of this decision.

In Matal v. Tam, Justice Samuel Alito, writing for the majority, noted that Walker v. Texas (2005) “likely marks the outer bounds of the government-speech doctrine.” In Walker the court held that messages on specialty license plates are government speech.

Section 2(a) of the Lanham Act bars the Patent and Trademark Office (PTO) from registering marks that disparage persons and institutions.

Simon Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. The PTO refused to register the band name, concluding a “substantial composite of people” would find it offensive. Tam sued the trademark office arguing that Section 2(a) violates the First Amendment Free Speech Clause.

Among other arguments, the Supreme Court rejected the federal government’s claim that trademarks are government speech or a form of government subsidy.

In rejecting the argument that trademarks are government speech, the court noted that none of the factors present in Walker are present in this case. Specifically, license plates have long been used to convey state messages, and are closely identified with the state since they are manufactured, owned, and generally designed by the state. Texas directly controlled the messages conveyed on specialty plates.

The court considered a variety of things the trademark office has approved including Nike's Just Do It slogan and Burger King's Have it Your Way tagline. The court concluded: “[i]f the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently.”

The Supreme Court has upheld the constitutionality of government programs that subsidize speech expressing a particular viewpoint like federal grants to artists or libraries.

The court rejected the argument that the federal registration of trademarks is anything like these programs. Notably, the PTO charges people to register marks; it does not pay people seeking mark registration.

Applying the First Amendment, the court concluded that the “disparagement clause” is unconstitutional because it is not “’narrowly drawn’ to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution.” 

Lisa Soronen is executive director of the State and Local Legal Center and a frequent contributor to the NCSL Blog on judicial issues.