We can be certain of one thing for sure, the Supreme Court’s decision today, striking down the disparagement clause of Section 2(a) of the Lanham Act will be analyzed for some time.

The Court called the provision of the Lanham Act barring the federal registration of trademarks that consist of or comprise matter that may disparage persons, a “happy-talk clause,” concluding it violates the First Amendment.

The debate over the implications of the Tam decision has commenced, so stay tuned.

Those of you who know me well can appreciate, this is a tough pill to swallow, we’ll have to see what good can come from it.

And, the answer to a question I raised back in 2015 apparently will be answered “no,” but not for reasons I had hoped.

Ron, I had envisioned writing a very different post about the Supreme Court’s long-anticipated decision in Tam, you, your team, and Mr. Tam have made history.

By the way, anyone know who coined the phrase Happy-Talk Clause, I must have missed that in the briefing?

  • Dan Kelly

    The most interesting aspect of this case is the groundwork it lays for the future of this issue – if this issue has a future. The Alito plurality seems willing to uphold some sort of disparagement restriction, provided that it passes the Central Hudson test – i.e. that it extends only as far as the interest it serves (although see Thomas’s opinion – he doesn’t appear sold on Central Hudson). The Kennedy plurality would evidently apply strict scrutiny to any disparagement restriction – and may well have Thomas in their corner were a case to overturn Central Hudson. I have a hard time seeing any revised disparagement clause surviving a challenge under the Court’s current makeup, but perhaps I’m not thinking creatively enough.

  • Steve,

    You are the father of a creative and, until Simon Tam came along, what looked like an historical legal approach to Section 2(a) and “the Redskins problem.” Many people of good will, motivated by feelings of decency, civility and civic pride (those last two are not synonyms), were understandably supportive of the sentiments it reflected and the result being sought.

    Simon Tam’s situation complicated things. He was not the Redskins. He is not sympathetic to them today. When I filed our first two rounds of appeal from the PTO’s refusal to register, I was certain that at one level or another, a reviewing tribunal would recognize and acknowledge the repeated and manifest departures by the PTO from its own examining standards and would remind examiners that while Section 2(a) was unassailable, it was not a license to ignore the rights of applicants or to disregard the burden on the government to justify a denial under 2(a).

    It was the inexorable, largely bureaucratic logic of 2(a)’s disparagement clause that killed it. The PTO could not and would not give in on THE SLANTS even when we raised the procedural issues in responses to the office actions and to the TTAB, because its rigid application had taken on ideological proportions — mainly due to fear about certain “unmentionable” trademarks that would have to be let in the door if THE SLANTS were.

    That fear was quite rational. But it was also reasonable to assume that in a time when no expression of dissent, no mockery of traditional mores and no expression of political “resistance,” regardless of severity, is barred from public discourse, the idea of carving out the trademark registration system as a place of heightened decency and propriety was doomed. Again, though, if that idea ever made any sense, its fate was sealed by the way the PTO – believing it was doing its duty – handled the Tam application. And, obviously, if it hadn’t been Simon Tam who pushed the issue, it would have been the next guy.

    You’re right to mourn what seems like the loss of a certain elevated tone from what we think of as the trademark practice. Based on my years talking about these issues with our colleagues in the trademark bar, you are far from alone in your mourning. I believe, in fact, that while most trademark lawyers are big fans of the First Amendment, they did not want this outcome. It did nothing for the vast majority of their clients, it does not grow their practices and it’s icky.

    The Supreme Court held today that ickiness or squeamishness, whether experienced by trademark lawyers or by strangers to the registration equation who would not know what was in the Principal Register in a million years but for notorious cases like this, are not grounds to make distinctions among those who apply to register valid trademarks.

    The only thing we can do now is encourage — by example, by our good offices and by our influence on our institutions — a return to civility, good taste and sensitivity in our discourse. Will that make the Redskins change their team name? Maybe, some day, it will. If it doesn’t, those who object to it will have many other ways of showing their displeasure. You have fought a good and admirable fight, Steve, and I have been proud to call you a colleague and friend for as long as we have known each other.