Matal v. Tam Revisited

The Supreme Court’s ruling this past summer in Matal v. Tam was more than just a decision on the titles that could be used when registering one’s mark, it was also a vindication to those whom slurs have been used against; an opportunity to reclaim the word and change its meaning or at the very least, attach new feelings to it. This was the noble goal underlying lead singer, Simon Tam, of the rock group, “The Slants” action about a decade ago. Tam recalls that growing up “the notion of having slanted eyes was always considered a negative thing…and kids would pull their eyes back in a slant-eyed gesture to make fun of us and I wanted to change it to something that was powerful, something that was considered beautiful.” This post was originally published on the Cardozo Arts & Entertainment Law Journal website on January 17, 2018. The original post can be accessed via the Archived Link button above

Trademarks & The First Amendment After Matal v. Tam

The United States Supreme Court\u27s unanimous ruling in Matal v. Tam is a landmark decision regarding the intersection between free speech and trademark law. Addressing whether trademarks can legitimately be barred from federal trademark protection under the Lanham Act based solely on their possible disparaging content, the litigation involving an Asian-American band that sought to register the name, The Slants, brought this important interplay into stark relief. Writing in bold strokes, Justice Alito\u27s opinion holds that the Lanham Act\u27s prohibition on disparaging marks, 15 U.S.C. 51052(a), violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend. Justice Kennedy\u27s concurring opinion (which was joined by three other Justices) also broadly states: the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties. \u27 The Court\u27s categorically worded decision will have important implications for both the First Amendment and for trademark law for years to come. The question is thus how far does the Tam decision reach, and whether it will upend major aspects of trademark law. This article provides an analysis of the implications of Tam for trademark law, both in terms of eligibility for registration and in terms of the scope of trademark protection. The article takes the view that Court correctly found the prohibition on registration of disparaging marks to be contrary to fundamental principles of free speech, and that its analysis should apply directly to the similar blanket prohibitions on registering immoral or scandalous content. The article suggests ways in which these provisions could be revised or narrowed to satisfy First Amendment scrutiny. In contrast to the Lanham Act provisions that are now plainly unconstitutional, other prohibitions found in the Lanham Act, which preclude deceptive, confusingly similar, and functional marks, can be defended based upon traditional trademark principles that are consistent with robust First Amendment protections for free speech. This article contends that First Amendment principles do allow for most of the statutory limitations placed on trademark registration, and that - contrary to the predictions of some commentators - the ruling will not cause any significant disruption in the large majority of trademark cases. It is true, however, as at least one court has now held, that the Lanham Act rules against immoral, scandalous, and disparaging marks must be completely reevaluated based on free speech considerations. Finally, the article addresses whether Tam might eventually alter the extent to which the scope of protection trademark owners receive based on their ability to prevent confusingly similar uses and to prevent dilution by tarnishment or blurring might be subject to challenge under the First Amendment. The article finds that claims by trademark owners based on consumer confusion or dilution should generally be unaffected by the Supreme Court\u27s decision in Tam

State of Utah v. Tam T. Nguyen : Brief of Appellant

AMENDED* BRIEF OF APPELLANT APPEAL FROM THE SENTENCE AND COMMITMENT ORDER OF THE THIRD DISTRICT COURT, IN AND FOR SALT LAKE COUNTY, STATE OF UTAH, THE HONORABLE KENNETH RIGTRUP, PRESIDING

Beyond Trademarks and Offense: \u3ci\u3eTam\u3c/i\u3e and the Justices’ Evolution on Free Speech

In Matal v. Tam , the Supreme Court threw out the “disparagement clause” of the Lanham Act, the federal trademark law, because trademarks are private speech and thus regulating them based on government determinations of offensiveness violates the First Amendment. The solid outcome here contrasts with the narrow, incremental results in some other recent First Amendment cases that reached the Court

Choosing the Consequences of Tam and Brunetti

In Matal v. Tam and Iancu v. Brunetti, the Supreme Court did something it has never done before – namely apply strict First Amendment scrutiny to trademark law. This is a big deal. Many have argued, to relatively little effect, that intellectual property laws, like trademarks, raise serious free speech problems. It is therefore significant news for the Court to declare portions of the Lanham Act unconstitutional not once, but twice