The Lanham Act: Disparagement Provision Violates the First Amendment


On June 19, 2017, the Supreme Court made a decision in Matal v. Tam (previously known as Lee v. Tam). The case addressed the issue of whether or not the Lanham Act’s disparagement clause impeded on trademark applicants’ First Amendment rights.


The case’s history can be traced back to front-man Simon Tam’s application to register his band name The Slants, filed in 2011. As his application progressed through the registration process, it was rejected by the examining attorney, who cited the Lanham Act’s prohibition of trademarks that “may ‘disparage...or bring...into contemp[t] or disrepute’ any ‘persons, living or dead’” U.S.C. §1052(a). However, Tam claimed that his intentions were not to disparage, but to reclaim the term and express pride in his Asian heritage. In response to the denial of his application, Tam appealed before the Federal Circuit, whose final decision recognized the disparagement provision of the Lanham Act as unconstitutional. For this reason, the Federal Circuit expressed that Tam should be granted his trademark registration for The Slants. However, the Patents and Trademark Office still did not agree that Tam should be granted his mark, and the case was then appealed and presented before the Supreme Court.

The Decision

On January 18, 2017, oral arguments were heard before the Supreme Court, and a decision was made on June 19, 2017. The Supreme Court unanimously affirmed the Federal Circuit’s decision that the Lanham Act’s disparagement provision is unconstitutional, violating the applicant’s right to free speech. This decision was made upon the arguments of viewpoint-based discrimination and commercial vs. expressive purpose of a mark. Although perceived as offensive to some, prohibiting such marks silences a viewpoint, and with trademarks being considered private speech rather than government speech, the silencing of these viewpoints is considered a violation of the First Amendment. Furthermore, because the Government and its programs are obliged to adhere to viewpoint neutrality, commercial speech (i.e. trademarks) is no exception, regardless of the speech’s expressive aspect. The disparagement provision automatically muffles a viewpoint albeit disfavored, and therefore, all trademarks—even those perceived to be offensive—are at the very least entitled to a chance of becoming registered.


This Supreme Court decision redefined the Lanham Act and its boundaries. The disparagement provision can no longer be used as a basis for rejection of a U.S. trademark application due to its violation of the First Amendment. It excludes the government from deciding what is considered moral and immoral, leveling the field for trademark applications and granting applicants the chance to protect their names.


Full decision can be read here: Matal, Interim Director, United States Patent and Trademark Office v. Tam


  • Marin11/18/2015 6:11:11 PM

    PTAB Decisions Give Examples of Patent Eligible Subject Matter

  • Marin11/18/2015 6:15:40 PM

    Covered Business Method Claims Are Not Required to Particularly Target Financial Industry

  • Marin11/18/2015 7:31:35 PM

    When Is a Thesis Prior Art?

  • Marin11/19/2015 2:13:05 PM

    An Innovator’s Dilemma: Design or Utility Patent?

  • Marin1/28/2016 9:10:56 PM

    How Unpredictability Can Affect Obviousness Challenges

  • Marin1/28/2016 9:15:16 PM

    The Patent Trial and Appeal Board Designates Two Decisions as Precedential

  • M. Cionca and I. Kim2/4/2016 5:55:16 PM

    Software Inventions Are Still Patentable!

  • Marin Cionca2/16/2016 6:34:53 PM

    In IPRs, patentees have to show that substitute patent claims are patentable

  • I. Kim PhD2/26/2016 8:47:51 PM

    The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

  • Iris Kim, PhD3/25/2016 8:34:14 PM

    Challenging a Claim’s Validity with Different Standards of Claim Construction

  • Marin Cionca5/17/2016 8:57:23 PM

    Patent Claims Rejection Based on Inherency

  • Iris Kim, PhD6/1/2016 7:04:50 PM

    The Patent Trial and Appeal Board Designates Five More Decisions as Precedential

  • Marin Cionca9/6/2016 9:26:12 PM

    Patent Case Law: New Example of Software as Patentable Subject Matter

  • Marin Cionca9/15/2016 9:47:39 PM

    Patent Law Alert: Federal Circuit Opens Door for More Software Patents

  • Marin Cionca2/21/2017 12:30:52 AM

    Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable

  • Marin Cionca4/25/2017 9:48:49 PM

    Monetization of Patents: How to Make Money with Patents

  • CIONCA - Staff6/15/2017 5:32:14 PM

    Patent Law: Challenging the Patent Claim Definiteness Requirement

  • CIONCA - Staff6/28/2017 8:26:07 PM

    Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution

  • CIONCA - Staff8/9/2017 5:39:58 PM

    Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable

  • CIONCA Staff8/20/2017 3:16:11 PM

    CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued

  • staff9/15/2017 9:33:30 PM


  • staff9/27/2017 5:00:12 PM

    Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

  • staff9/27/2017 5:12:07 PM

    CIONCA - Patent and Trademark Law Attorney

  • Staff9/28/2017 7:27:22 PM


  • Staff11/3/2017 4:20:04 PM

    An Introduction to Provisional Patent Applications

  • 11/10/2017 6:47:44 PM

    An Introduction to Design Patent Applications

  • 11/17/2017 1:24:20 PM

    An Introduction to Patent Searches

  • 12/1/2017 8:01:27 PM

    An Introduction to Patent Cooperation Treaty Applications

  • 12/26/2017 6:04:25 PM

    CIONCA Sets Foot in San Francisco

  • 1/2/2018 7:47:09 PM

    The Lanham Act: Disparagement Provision Violates the First Amendment

  • CIONCA Team1/17/2018 8:12:06 PM

    A Fork in the Road: Production or Protection?

  • CIONCA Team2/16/2018 4:07:48 PM

    Fashion and Intellectual Property

  • 3/8/2018 1:25:46 PM

    Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance


Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899



About our IP law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution and opinion services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.


Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198