Matal v. Tam: Disparagement Clause, Free Speech, and Aftermath

In Matal v. Tam, decided in 2017, the Supreme Court unanimously struck down the Lanham Act’s disparagement clause, holding that the federal government cannot refuse to register a trademark because officials consider it offensive. All eight participating justices agreed that the clause violated the First Amendment’s Free Speech Clause because it discriminated based on the viewpoint a mark expressed. The decision arose out of an Asian-American rock band’s fight to register the name “The Slants,” and it reshaped what the U.S. Patent and Trademark Office is allowed to weigh when it looks at an application.

How the Case Reached the Supreme Court

Federal trademark registration runs on the Lanham Act, passed in 1946.¹ Section 2(a) of the Act listed categories of marks that could not appear on the federal register, including any mark that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”² The clause never made it illegal to use an offensive name in business. It only withheld the legal advantages of federal registration: the ability to sue infringers in federal court, a presumption of nationwide ownership, and customs enforcement against counterfeits.

In 2011, Simon Tam applied to register “THE SLANTS” for his rock band. Tam, who is Asian American, chose the name as a deliberate reclamation of a racial slur, wanting to strip the word of its derogatory force by owning it publicly. The trademark office rejected the application under Section 2(a), concluding that a substantial portion of Asian Americans would find the name disparaging regardless of Tam’s intent. The Trademark Trial and Appeal Board affirmed. Tam then took the case to the Federal Circuit, which heard it en banc and ruled that the disparagement clause was facially unconstitutional under the First Amendment.³ The government asked the Supreme Court to reverse.

The Court’s Reasoning

Justice Alito delivered the opinion of the Court. Justice Gorsuch, who had not yet joined the Court when the case was argued, did not participate, and the remaining eight justices agreed on the outcome.⁴ The core holding was that the disparagement clause engaged in viewpoint discrimination. A mark that praised or spoke positively about a group could be registered; a mark that criticized or demeaned the same group could not. That asymmetry picked a side in a debate about what attitudes toward racial, ethnic, and social groups are acceptable, and under settled First Amendment doctrine, viewpoint discrimination is the most disfavored form of content-based regulation.³

The government’s primary defense was that it had a legitimate interest in preventing offense. The Court rejected that outright. As Oyez summarized, “any asserted interest of avoiding offense clearly contravened the purpose of the First Amendment’s protection of free speech.”⁴ The freedom to speak includes the freedom to offend, and the government cannot use its registration system to impose a civility requirement on private expression.

Trademarks Are Not Government Speech

The government also argued that trademarks should be classified as government speech, which would put them outside the First Amendment entirely. If the Court had accepted that framing, the trademark office could reject any mark for any reason, just as the government can choose the messages on its own monuments or specialty license plates. The justices dismissed the argument.³ Private parties create trademarks, choose the words and designs, and use them to identify their own goods. The trademark office maintains a registry; it does not author brand names. Calling every registered mark government speech would give the government theoretical ownership over millions of brand names in American commerce.

Registration Is Not a Government Subsidy

A related argument tried to characterize trademark registration as a federal subsidy, a framing that would let the government attach content-based conditions without triggering full First Amendment scrutiny. Justice Alito’s plurality, joined by Chief Justice Roberts and Justices Thomas and Breyer, rejected that too. Applicants pay the government to register, not the other way around, and filing, maintenance, and renewal fees all flow from the trademark holder to the treasury.⁵

The Split Behind the Unanimous Result

Although the eight justices reached the same bottom line, they split on how much analysis the case required. Parts I, II, and III–A of Alito’s opinion commanded a full majority. Parts III–B, III–C, and IV were joined only by Roberts, Thomas, and Breyer, and went further to address the subsidy theory and to explain that the clause would fail even under the more relaxed standard for commercial-speech regulation.⁵

Justice Kennedy, joined by Ginsburg, Sotomayor, and Kagan, concurred. In his view, once a regulation is identified as viewpoint discrimination the analysis is over: viewpoint discrimination is presumptively unconstitutional, and no doctrinal maneuvering around subsidies or government programs changes that result. Kennedy wrote that even if trademarks qualify as commercial speech, that classification provides no “blanket exemption from the First Amendment’s requirement of viewpoint neutrality.” That four-justice concurrence staked out an even more speech-protective position than the plurality.

What Changed After the Ruling

The most immediate effect was that the USPTO could no longer refuse a mark for being disparaging. The Slants registration issued later in 2017. The ruling also rippled into other pending disputes and set the template for a follow-on case at the Court.

The Washington Football Team Registrations

The highest-profile collateral consequence involved the Washington NFL franchise, which had been fighting since 2014 to keep its “Redskins” registrations. A federal district court had ordered several of them cancelled as disparaging to Native Americans, and the case was pending before the Fourth Circuit when Tam came down. With the disparagement clause unconstitutional, the legal basis for cancellation was gone. The opposing parties dropped their challenge and the registrations remained intact. The team later changed its name for unrelated branding and sponsorship reasons.

Iancu v. Brunetti Extended the Logic

Two years later, the Court applied the same reasoning to the neighboring provision of Section 2(a) that barred “immoral” or “scandalous” marks. Erik Brunetti had tried to register “FUCT” for a clothing line and been refused. In Iancu v. Brunetti (2019), a 6–3 majority written by Justice Kagan struck down that bar as viewpoint discrimination, following the Tam playbook: it distinguished between marks that aligned with conventional moral standards and marks that challenged them, and that kind of judgment is inherently viewpoint-based.⁶⁷ The government asked the Court to save the statute by reading “scandalous” narrowly to reach only vulgar or profane marks. The majority found the statutory text would not bear that reading.

What Section 2 Still Prohibits

The two content-based moral judgments in Section 2(a) are gone: examiners can no longer reject marks as disparaging, immoral, or scandalous. Section 2 still contains several restrictions that survive because they address consumer confusion, deception, or personal rights rather than viewpoint. A mark can still be refused if it:

Is deceptive. The “deceptive” portion of Section 2(a) was untouched by either ruling.
Falsely suggests a connection with a person, institution, or national symbol.²
Includes government insignia, such as flags, coats of arms, or other official emblems of the United States, any state, or a foreign nation.
Uses a living person’s name or likeness without written consent, or uses a deceased president’s name during the lifetime of the surviving spouse without consent.
Is confusingly similar to an existing registered mark or a previously used mark that hasn’t been abandoned.
Is merely descriptive, primarily a surname, or functional.

Why the Case Matters Beyond Trademarks

The significance of Matal v. Tam reaches past trademark law into how the government interacts with private expression through its administrative systems. The ruling stands for the proposition that a federal benefit cannot be conditioned on the government’s approval of the beneficiary’s message. That principle travels to any registration system, grant program, or licensing scheme that touches expressive activity.

The decision also drew a hard line against expanding the government-speech doctrine. In earlier cases the Court had accepted that the government speaks through its own monuments and specialty license plates. Had the justices extended that logic to trademarks, the precedent could have reached patents, copyrights, domain name registrations, and other systems where the government records privately created intellectual property. By refusing to take that step, the Court kept the government-speech doctrine narrow enough that it cannot easily swallow private expression.

The practical takeaway is one the Court spent decades of litigation reaching: when a federal examiner reads a trademark application and asks whether the name might hurt someone’s feelings, that examiner is exercising a power the First Amendment does not allow. The remedy for offensive speech, in the Court’s telling, is more speech, not the quiet administrative denial of a federal registration.

1
Government Publishing Office. Lanham Act
2
Office of the Law Revision Counsel. 15 U.S. Code 1052 – Trademarks Registrable on Principal Register; Concurrent Registration
3
Supreme Court of the United States. Matal v. Tam
4
Oyez. Matal v. Tam
5
Justia US Supreme Court. Matal v. Tam, 582 U.S. ___ (2017)
6
Supreme Court of the United States. Iancu v. Brunetti
7
Oyez. Iancu v. Brunetti