The Supreme Court of the United States’ decision in the 2017 case of Matal v Tam (“Matal”) has important implications for trademark law inside and outside of the United States.”  In ruling that the Lanham Act’s “non-disparagement” provision violated the First Amendment, the Court affirmed the decision of the Court of Appeal for the Federal Circuit. Prior to the decision, the Act’s “non-disparagement” provision prohibited the registration of marks with the USPTO that could be considered disparaging to persons, beliefs, institutions, etc. This case was in response to the registration of THE SLANTS for an Asian rock band name. Matal has several significant takeaways, including the further differentiation of US trademark law from that of jurisdictions that take a more restrictive approach to the registration of offensive marks.

Many jurisdictions have provisions that prohibit the registration of offensive marks in accordance with moral and public policy concerns. For example, section 9(1)(j) of Canada’s Trade-marks Act prohibits the registration of “any scandalous, obscene or immoral word or device.” Brazil and Australia[1] also enforce similar clauses. Therefore, while the decision in Matal has direct implications for US trademark law, it also raises a host of questions for trademark law around the world.

The amicus briefs filed in Matal present illuminating insights on how the Court may have taken a step too far. The brief submitted by the American Bar Association (ABA) is a logical place to begin this analysis, given the foundational issue that was the focus of the submission. The ABA sought to correct the Court of Appeals for the Federal Circuit on the distinction between trademark validity and trademark registrability. In addition to the Court confusing validity and registrability, a finding that section 2(a) of the Lanham Act violates the First Amendment would lead to uncertainty about the consequences of a finding of “unregistrability”. The ABA correctly pointed out that the Court of Appeals in Matal seems to have treated trademark validity and trademark registrability interchangeably, which may have had a compound effect on the final decision. The court did, however, state that the unregistrability on the Principal Register does not prevent a trademark from being used legitimately in commerce. However, the Court of Appeals seems to have also erroneously implied that a determination of unregistrability makes an otherwise valid mark ineligible for protection under the Lanham Act, which, according to the ABA, is incorrect. This means that Simon Tam’s proposed mark THE SLANTS may have been ineligible for registration prior to the ruling in this case, a finding of unregistrability is not determinative of whether or not a mark can be used in commerce

In the event of an infringement or unfair competition claims under the previous law, Tam could have protected his mark through the common law. Furthermore, the Court of Appeals stated that “[w]ithout federal registration, a trademark user cannot stop importation of goods bearing the mark …” While this was not directly relevant to Tam’s situation, it certainly has broad implications for cases to come. Regardless, it is inaccurate. Owners of unregistered trademarks have other federal causes of action at their disposal. Indeed, the ABA gave the example of the possibility of “filing a complaint pursuant to Section 337 of the Tariff Act before the International Trade Commission (“ITC”) to stop the importation of goods bearing the mark that violate those common-law rights.”[2] Moreover, valid yet unregistered marks may also enjoy protection against cybersquatting, according to the Anti-Cybersquatting Consumer Protection Act.[3] In addition, state law causes of action—such as likelihood-of-confusion-based causes of action for infringement, unfair competition, and deceptive trade practices—present other avenues for the owners of unregistered trademarks to enforce their intellectual property rights.

An interesting perspective voiced by law professors in support of the USPTO is that any decision the government makes in circumstances such as those giving rise to the dispute in Matal is not necessarily neutral because speech will be inevitably supressed. The brief states that “...a trademark registration is a government-issued document that makes it easier for its owner to suppress the speech of others...” because it is a right to exclude, contrary to the opinion of the Tenth Circuit in San Juan Products, Inc. v. San Juan Pools of Kansas, Inc.. This means that, in trademark law, the government is necessarily interfering with someone’s speech; whether it be the trademark owner’s in the case of a refusal, or competitors’ in the case of a trademark registration. This, according to the professors behind the brief, would “wreak havoc on trademark law”, but can be remedied by a decision in favour of the USPTO. This is because trademark law is content-based rather than viewpoint-based. Prior to this case, anyone could be caught under the disparagement clause, regardless of viewpoint. Disparagement is judged based on the content of the mark. Therefore, the law professors present a valid point when they state that “[u]nder the appropriate analytic framework, the bars of Section 2 reflect acceptable judgments about which symbols should receive legal protection as source identifiers, not penalties imposed on an actor doing business independently of the government.” In essence, the Court of Appeals erred in viewing the Lanham Act’s regulatory scheme as being presumptively unconstitutional because a trademark registration denial is seen as a ban on free speech.

The implications for trademark law are not the only concern with respect to the expansion of free speech when it comes to offensive marks. The brief of Native American Organizations agrees with the perspective of the law professors above in the sense that “[t]rademarks can function as instruments of speech-suppression precisely because they regulate commercial speech.” In this way, the government plays an important role in the operation of commerce, which facilitates the filtration of disparaging and racist marks. When the government exercised this role with respect to offensive marks prior to Matal, it did not strip the owner of the use of a trademark as a whole, but simply withheld the benefits that registration carries. Therefore, from this perspective, this case confirms the “longstanding use of derogatory Native American imagery”, which also alludes to the attention captured by the Washington Redskins case.

As such, concerns regarding freedom of speech became real in light of Matal, which may be a reason to think that the ruling in this case pushed the boundaries of free speech too far, despite the advantages that it carried for trademark owners. This, in conjunction with the wide range of international uncertainty that Matal has caused, is a factor that makes the decision slightly unsettling and casts doubt as to whether the step taken by the U.S. Supreme Court swung the balance too far in favour of free speech. The full range of these impacts, however, has yet to be seen given the recent issuance of this decision.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[1] Vicki Huang, “Comparative Analysis of US and Australian Trade Mark Applications for THE SLANTS” (2017), Eur IP Rev at 6[Huang].

[2] Tariff Act, 19 USC § 1337 (2012). See In re Certain Digital Multimeters, & Prods With Multimeter Functionality, Inv No 337-TA-588, USITC Pub 4210, 2010 ITC LEXIS 2867.

[3] Consumer Protection Act, 15 USC § 1125(d).