Three years ago, the United States Supreme Court decided Matal v. Tam, which involved a facial challenge to 15 U.S.C. §1052(a), the disparagement clause of the Lanham Act.1 The lead singer of a musical group consisting of Asian Americans sought a trademark for their group’s name, “The Slants.”2 The term is a derogatory reference to people of Asian descent, and the group’s goal in choosing the name was “reclaim[ing]” and “tak[ing] ownership” of the stereotype.3 The trademark application was denied by the Patent and Trademark Office (USPTO) because it found the term offensive under the two-part administrative test applied under the disparagement clause.4 The applicant challenged that decision in the Federal Circuit Court of Appeals which after en banc review reversed the denial of registration on the ground that the disparagement clause violated the First Amendment.5 The Solicitor General successfully petitioned for certiorari on the sole question of whether the disparagement clause was “facially invalid under the Free Speech Clause of the First Amendment.”6

The decision affirmed the Federal Circuit’s ruling that the disparagement clause was unconstitutional, but the splintered opinion did little to clarify the state of the jurisprudence. All eight justices agreed that the disparagement clause did violate the Free Speech Clause because it violated “the bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”7 The Court also uniformly rejected the Solicitor’s argument that the mark constituted government speech, characterizing that as a “huge and dangerous extension” of that doctrine.8 Four justices then rebuffed the Solicitor’s arguments based on theories of “government subsidy” and “government program,” while making passing reference to the supposedly analogous “public forum” doctrine.9

However, the Court then dodged an important issue: Whether a trademark constitutes commercial speech, and, relatedly, whether a trademark regulation is subject to strict or intermediate scrutiny.10 In addressing this issue, Justice Alito, joined by three other justices, noted that many “trademarks have an expressive component” (as “The Slants” unquestionably had in this case). Despite prior precedential holding-that speech is fully protected where its commercial and non-commercial components are “inextricably intertwined,”11 and commercial speech is “no exception” to the rule that content and viewpoint discrimination are subject to “heightened scrutiny”12-Justice Alito declined to decide the issue simply because the disparagement clause could not withstand even the commercial speech standard of intermediate scrutiny.13 The primary government interest asserted to justify the disparagement clause was to prevent underrepresented groups from exposure to demeaning messages.14 But this interest, as Justice Alito correctly pointed out, amounts to viewpoint discrimination and “strike[s] at the heart of the First Amendment.”15 The term may be offensive to some, but “[g]iving offense is a viewpoint.”16 In this regard, the disparagement clause was nothing more than a “happy talk clause.”17

A concurring opinion, authored by Justice Kennedy and joined by Justices Ginsburg, Kagan, and Sotomayor, more definitively addressed the question of the appropriate level of scrutiny to apply.18 According to Justice Kennedy, the disparagement clause embodied “the essence of viewpoint discrimination,”19 which is subject to “rigorous” or “heightened” scrutiny.20 This analysis is proper because the government is signaling out speech reflecting a specific subset of views (e.g., negative views toward a racial group), while allowing speech expressing the opposite idea.21 The danger of this approach is that it could “silence dissent and distort the marketplace of ideas.”22 “To permit viewpoint discrimination in this context is to permit Government censorship.”23 As if to chastise the author of the main opinion, Justice Kennedy asserted that the undeniable existence of viewpoint discrimination “renders unnecessary any extended treatment of the other questions raised by the parties.”24

Justice Thomas added a separate concurrence, essentially stating that strict scrutiny was appropriate under the circumstances.25

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1. 137 S.Ct. 1744 (2017).

2. Id. at 1754.

3. Id.

4. Id.

5. Id.

6. Id. at 1755.

7. Id. at 1751.

8. Id. at 1760.

9. Id. at 1763.

10. Compare Id. at 1764 with Id. at 1767.

11. Riley v. Natl. Federation of the Blind of No. Carolina, Inc., 487 U.S. 781, 796 (1988).

12. Sorrell v. IMS Health Inc., 564 U.S. 552, 567 (2011).

13. 137 S.Ct. at 1764 (citing Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980)).

14. Id.

15. Id.

16. Id. at 1763.

17. Id. at 1765.

18. Id. at 1767 (Kennedy, J., concurring).

19. Id. at 1766.

20. Id. at 1765, 1767.

21. Id. at 1766.

22. Id.

23. Id. at 1768.

24. Id. at 1765.

25. Id. at 1769 (Thomas, J., concurring)

Originally published by NJSBA’s October 2020 issue of New Jersey Lawyer.