Matal v. Tam: Why the Lanham Act Cannot Punish a Band Called The Slants

Matal v. Tam, No. 15-1293, 582 U.S. 218 (decided June 19, 2017), is the decision that finally answered a question the Patent and Trademark Office had managed to avoid for seventy years: may the federal government refuse to register a trademark because officials find the mark offensive? The Supreme Court’s answer was an unequivocal no. Simon Tam, the founder of an Asian-American dance-rock band called The Slants, sought to register the band’s name and was refused under the Lanham Act’s “disparagement clause,” 15 U.S.C. § 1052(a), which barred registration of marks that “may disparage” persons living or dead. Eight Justices — the case was decided by an eight-member Court, with Justice Gorsuch not participating — agreed that the clause could not survive the First Amendment.

At a glance

• Case: Matal v. Tam, No. 15-1293, 582 U.S. 218 (2017)
• Court: Supreme Court of the United States, on certiorari to the Federal Circuit (en banc)
• Argued: January 18, 2017; Decided: June 19, 2017
• Holding: The Lanham Act’s disparagement clause violates the Free Speech Clause; it constitutes viewpoint discrimination and is not saved by any government-speech, government-subsidy, or commercial-speech rationale
• Vote: Judgment unanimous (8-0, Gorsuch, J., not participating); the Court fractured over reasoning, with Justice Alito announcing the judgment and writing for a plurality in part, and Justice Kennedy concurring in part and in the judgment

The dispute and the procedural posture

Tam chose the name deliberately, intending to “reclaim” a term historically used as an ethnic slur and to drain it of its denigrating power. The examining attorney, applying the disparagement clause, found that the mark would be perceived as disparaging to people of Asian descent and refused registration. The Trademark Trial and Appeal Board affirmed. The Federal Circuit, sitting en banc, reversed and held the clause facially unconstitutional. The Supreme Court granted certiorari and affirmed the Federal Circuit.

The irony at the center of the case is worth naming. The government invoked a statute meant to shield ethnic groups from denigration to suppress the speech of a member of the very group the statute purported to protect, who was using the term to challenge the slur. That mismatch foreshadowed the doctrinal problem: a rule that turns on whether speech gives offense cannot reliably distinguish an insult from its rebuttal.

Trademarks are private speech, not government speech

The government’s most ambitious argument was that registered trademarks are government speech, a category that escapes Free Speech Clause scrutiny entirely because the government is entitled to say what it wishes. The Court rejected this firmly and unanimously on this point. Registration does not convert a mark into the government’s own message. The PTO does not author, endorse, or vouch for the content of the millions of marks on the register; it registers marks expressing every conceivable and contradictory sentiment. To call that vast and clashing body of private expression “government speech” would, the Court warned, be a “huge and dangerous extension of the government-speech doctrine,” one that could be turned on copyrights and other registration regimes. The opinion treated the government-speech theory as the case’s most serious threat precisely because, if accepted, it would have removed trademark from First Amendment protection altogether.

The Court likewise dispatched two fallback theories. The disparagement clause was not a permissible condition on a government subsidy — registration is not cash, and the cases sustaining content limits on funded programs did not reach this far. Nor could the clause be salvaged by treating it as a regulation of commercial speech under the relaxed Central Hudson standard. Even assuming trademarks are commercial speech, the clause failed: it was not narrowly drawn to serve a substantial interest. The asserted interests — protecting orderly commerce and shielding groups from demeaning messages — could not justify a measure that swept in any expressive content deemed offensive.

The core holding: viewpoint discrimination

The unifying principle, embraced across both the Alito and Kennedy writings, is that the disparagement clause discriminates on the basis of viewpoint. Justice Alito put it memorably: giving offense is a viewpoint. A law that permits a mark praising a group but forbids one disparaging it is not content-neutral housekeeping; it favors one attitude toward a subject over another. Justice Kennedy’s opinion, joined by Justices Ginsburg, Sotomayor, and Kagan, sharpened the point, explaining that the clause “reflects the Government’s disapproval of a subset of messages it finds offensive” and that this is “the essence of viewpoint discrimination.” The clause was facially viewpoint-based because it applied to any mark with a disparaging cast regardless of subject, and the government’s claim that it was even-handed — barring marks that disparage anyone — did not cure the defect; it confirmed that the criterion was the disapproving viewpoint itself.

That reasoning is why Tam matters beyond its facts. It establishes that the act of registering a trademark is bound up with private expression, and that the government cannot ration that benefit according to whether it likes the message. The decision did not hold that trademarks are immune from all regulation; source-identifying, anti-confusion, and fraud rules remained untouched. What fell was the use of registration as a lever to police offensiveness.

Open questions

Tam resolved the disparagement clause but left the analytical machinery unsettled. The Justices split over the proper level of scrutiny and over whether trademark conditions should be evaluated under commercial-speech doctrine or general free-speech principles, and that fracture was never fully repaired. Iancu v. Brunetti (2019) extended Tam to the “immoral or scandalous” bar but reproduced the same methodological disagreement, and Vidal v. Elster (2024) — sustaining the viewpoint-neutral names clause — confirmed that the Court still lacks a majority-endorsed standard for content-based but viewpoint-neutral registration bars. The line Tam drew between impermissible viewpoint discrimination and permissible content-based conditions is now the central battleground, and its exact contours remain contested.

Implications

• Offensiveness is not a lawful ground for refusal. Examining attorneys may not deny registration because a mark is perceived as disparaging; that basis is gone from the Lanham Act’s enforceable toolkit.
• The government-speech doctrine has a ceiling. Registration regimes do not transmute private expression into government messaging, a holding with potential reach into copyright and analogous programs.
• Viewpoint is the dividing line. Bars keyed to the attitude a mark expresses are vulnerable; bars that apply regardless of viewpoint (the names clause, deceptiveness) stand on firmer ground after Vidal.
• Reclamation is protected. Speakers who repurpose slurs to subvert them receive the same protection as any other speaker; the law cannot sort offensive from counter-offensive uses.

Frequently asked questions

Did the Court say The Slants is not offensive? No. The Court took no position on whether the name offends; its point was that offensiveness cannot be the government’s criterion for granting or withholding registration. Whether speech gives offense is constitutionally irrelevant to the registration decision.

Was the decision truly unanimous? The judgment was unanimous among the eight participating Justices (Justice Gorsuch did not take part). The reasoning splintered: Justice Alito wrote for the Court in part and for a plurality in other parts, and Justice Kennedy concurred in part and in the judgment with three colleagues. They agreed on viewpoint discrimination but diverged on the scrutiny framework.

Does Tam mean any trademark can be registered? No. Ordinary registration requirements — distinctiveness, non-confusion, non-functionality, and the bars later upheld in Vidal — continue to apply. Tam removed only the offensiveness-based disparagement clause.

Authorities and sources

• Matal v. Tam, No. 15-1293, 582 U.S. 218 (June 19, 2017): opinion (Supreme Court slip opinion); case file (SCOTUSblog).
• Matal v. Tam (Cornell Legal Information Institute).
• Analysis: Harvard Law Review, “Matal v. Tam”.