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What Will Impact Be of Supreme Court's <i>Tam</i> Decision?
In Matal v. Tam, 137 S. Ct. 1744 (2017), the trademark case involving the name of the Asian-American rock band The Slants, the U.S. Supreme Court held that the portion of §2(a) of the Lanham Act, 15 U.S.C. §1052(a), that prohibits the federal registration of potentially disparaging trademarks and service marks, violated the Free Speech Clause of the First Amendment. The eight justices participating in the case agreed that the prohibition constituted a viewpoint-based government restriction, but they divided evenly on the constitutional significance of that consideration. Whatever the resolution of that division ultimately may be, though, the outcome of the litigation is unlikely to affect the validity of most — but not necessarily all — of the Lanham Act's other prohibitions on registration. This is an important consideration in the entertainment industry in which products with outrageous names are common.
Section 2(a) bars the registration of several categories of marks, including those “consisting or comprising immoral … or scandalous matter, or … which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This language has two distinct prongs, namely, whether a mark is “immoral or scandalous,” and whether a mark “may disparage”; only the latter prohibition was at stake in Tam. The two bans are closely related, and it is possible for a mark to be rejected under both. See, e.g., Boston Red Sox Baseball Club LP v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008) (refusing registration to SEX ROD mark for clothing). In addition, if a challenge is brought to an existing registration under these prongs of §2(a), the challenger must demonstrate the registration “was obtained” in violation of the statute, meaning that the challenger's showing must focus on whether the mark in question was scandalous, immoral or potentially disparaging on the date it was registered (see, 15 U.S.C. §1064(3)), rather than when the merits of the challenge are decided.
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