Matal v. Tam , 137 S. Ct. 1744 ( 2017 )

(Slip Opinion) OCTOBER TERM, 2016 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
MATAL, INTERIM DIRECTOR, UNITED STATES
PATENT AND TRADEMARK OFFICE v. TAM
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
No. 15–1293. Argued January 18, 2017—Decided June 19, 2017
Simon Tam, lead singer of the rock group “The Slants,” chose this mon-
iker in order to “reclaim” the term and drain its denigrating force as
a derogatory term for Asian persons. Tam sought federal registration
of the mark “THE SLANTS.” The Patent and Trademark Office
(PTO) denied the application under a Lanham Act provision prohibit-
ing the registration of trademarks that may “disparage . . . or bring
. . . into contemp[t] or disrepute” any “persons, living or dead.” 15
U.S. C. §1052(a). Tam contested the denial of registration through
the administrative appeals process, to no avail. He then took the
case to federal court, where the en banc Federal Circuit ultimately
found the disparagement clause facially unconstitutional under the
First Amendment’s Free Speech Clause.
Held: The judgment is affirmed.
808 F.3d 1321, affirmed.
JUSTICE ALITO delivered the opinion of the Court with respect to
Parts I, II, and III–A, concluding:
1. The disparagement clause applies to marks that disparage the
members of a racial or ethnic group. Tam’s view, that the clause ap-
plies only to natural or juristic persons, is refuted by the plain terms
of the clause, which uses the word “persons.” A mark that disparages
a “substantial” percentage of the members of a racial or ethnic group
necessarily disparages many “persons,” namely, members of that
group. Tam’s narrow reading also clashes with the breadth of the
disparagement clause, which by its terms applies not just to “per-
sons,” but also to “institutions” and “beliefs.” §1052(a). Had Con-
gress wanted to confine the reach of the clause, it could have used the
2 MATAL v. TAM
Syllabus
phrase “particular living individual,” which it used in neighboring
§1052(c). Tam contends that his interpretation is supported by legis-
lative history and by the PTO’s practice for many years of registering
marks that plainly denigrated certain groups. But an inquiry into
the meaning of the statute’s text ceases when, as here, “the statutory
language is unambiguous and the statutory scheme is coherent and
consistent.” Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450 (inter-
nal quotation marks omitted). Even if resort to legislative history
and early enforcement practice were appropriate, Tam has presented
nothing showing a congressional intent to adopt his interpretation,
and the PTO’s practice in the years following the disparagement
clause’s enactment is unenlightening. Pp. 8–12.
2. The disparagement clause violates the First Amendment’s Free
Speech Clause. Contrary to the Government’s contention, trade-
marks are private, not government speech. Because the “Free Speech
Clause . . . does not regulate government speech,” Pleasant Grove
City v. Summum, 555 U.S. 460, 467, the government is not required
to maintain viewpoint neutrality on its own speech. This Court exer-
cises great caution in extending its government-speech precedents,
for if private speech could be passed off as government speech by
simply affixing a government seal of approval, government could si-
lence or muffle the expression of disfavored viewpoints.
The Federal Government does not dream up the trademarks regis-
tered by the PTO. Except as required by §1052(a), an examiner may
not reject a mark based on the viewpoint that it appears to express.
If the mark meets the Lanham Act’s viewpoint-neutral requirements,
registration is mandatory. And once a mark is registered, the PTO is
not authorized to remove it from the register unless a party moves for
cancellation, the registration expires, or the Federal Trade Commis-
sion initiates proceedings based on certain grounds. It is thus far-
fetched to suggest that the content of a registered mark is govern-
ment speech, especially given the fact that if trademarks become gov-
ernment speech when they are registered, the Federal Government is
babbling prodigiously and incoherently. And none of this Court’s
government-speech cases supports the idea that registered trade-
marks are government speech. Johanns v. Livestock Marketing
Assn., 544 U.S. 550; Pleasant Grove City v. Summum, 555 U.S. 460;
and Walker v. Texas Div., Sons of Confederate Veterans, Inc., 576
U. S. ___, distinguished. Holding that the registration of a trade-
mark converts the mark into government speech would constitute a
huge and dangerous extension of the government-speech doctrine, for
other systems of government registration (such as copyright) could
easily be characterized in the same way. Pp. 12–18.
JUSTICE ALITO, joined by THE CHIEF JUSTICE, JUSTICE THOMAS, and
Cite as: 582 U. S. ____ (2017) 3
Syllabus
JUSTICE BREYER, concluded in Parts III–B, III–C, and IV:
(a) The Government’s argument that this case is governed by the
Court’s subsidized-speech cases is unpersuasive. Those cases all in-
volved cash subsidies or their equivalent, e.g., funds to private par-
ties for family planning services in Rust v. Sullivan, 500 U.S. 173,
and cash grants to artists in National Endowment for Arts v. Finley,
524 U.S. 569. The federal registration of a trademark is nothing like
these programs. The PTO does not pay money to parties seeking reg-
istration of a mark; it requires the payment of fees to file an applica-
tion and to maintain the registration once it is granted. The Gov-
ernment responds that registration provides valuable non-monetary
benefits traceable to the Government’s resources devoted to register-
ing the marks, but nearly every government service requires the ex-
penditure of government funds. This is true of services that benefit
everyone, like police and fire protection, as well as services that are
utilized by only some, e.g., the adjudication of private lawsuits and
the use of public parks and highways. Pp. 18–20.
(b) Also unpersuasive is the Government’s claim that the dispar-
agement clause is constitutional under a “government-program” doc-
trine, an argument which is based on a merger of this Court’s gov-
ernment-speech cases and subsidy cases. It points to two cases
involving a public employer’s collection of union dues from its em-
ployees, Davenport v. Washington Ed. Assn., 551 U.S. 177, and Ys-
ursa v. Pocatello Ed. Assn., 555 U.S. 353, but these cases occupy a
special area of First Amendment case law that is far removed from
the registration of trademarks. Cases in which government creates a
limited public forum for private speech, thus allowing for some con-
tent- and speaker-based restrictions, see, e.g., Good News Club v.
Milford Central School, 533 U.S. 98, 106–107; Rosenberger v. Rector
and Visitors of Univ. of Va., 515 U.S. 819, 831, are potentially more
analogous. But even in those cases, viewpoint discrimination is for-
bidden. The disparagement clause denies registration to any mark
that is offensive to a substantial percentage of the members of any
group. That is viewpoint discrimination in the sense relevant here:
Giving offense is a viewpoint. The “public expression of ideas may
not be prohibited merely because the ideas are themselves offensive
to some of their hearers.” Street v. New York, 394 U.S. 576, 592.
Pp. 20–23.
(c) The dispute between the parties over whether trademarks are
commercial speech subject to the relaxed scrutiny outlined in Central
Hudson Gas & Elect. v. Public Serv. Comm’n of N. Y., 447 U.S. 557,
need not be resolved here because the disparagement clause cannot
withstand even Central Hudson review. Under Central Hudson, a
restriction of speech must serve “a substantial interest” and be “nar-
4 MATAL v. TAM
Syllabus
rowly drawn.” Id., at 564–565 (internal quotation marks omitted).
One purported interest is in preventing speech expressing ideas that
offend, but that idea strikes at the heart of the First Amendment.
The second interest asserted is protecting the orderly flow of com-
merce from disruption caused by trademarks that support invidious
discrimination; but the clause, which reaches any trademark that
disparages any person, group, or institution, is not narrowly drawn.
Pp. 23–26.
JUSTICE KENNEDY, joined by JUSTICE GINSBURG, JUSTICE SO-
TOMAYOR, and JUSTICE KAGAN, agreed that 15 U.S. C. §1052(a) con-
stitutes viewpoint discrimination, concluding:
(a) With few narrow exceptions, a fundamental principle of the
First Amendment is that the government may not punish or suppress
speech based on disapproval of the ideas or perspectives the speech
conveys. See Rosenberger v. Rector and Visitors of Univ. of Va., 515
U.S. 819, 828–829. The test for viewpoint discrimination is wheth-
er—within the relevant subject category—the government has sin-
gled out a subset of messages for disfavor based on the views ex-
pressed. Here, the disparagement clause identifies the relevant
subject as “persons, living or dead, institutions, beliefs, or national
symbols,” §1052(a); and within that category, an applicant may regis-
ter a positive or benign mark but not a derogatory one. The law thus
reflects the Government’s disapproval of a subset of messages it finds
offensive, the essence of viewpoint discrimination. The Government’s
arguments in defense of the statute are unpersuasive. Pp. 2–5.
(b) Regardless of whether trademarks are commercial speech, the
viewpoint based discrimination here necessarily invokes heightened
scrutiny. See Sorrell v. IMS Health Inc., 564 U.S. 552, 566. To the
extent trademarks qualify as commercial speech, they are an exam-
ple of why that category does not serve as a blanket exemption from
the First Amendment’s requirement of viewpoint neutrality. In the
realm of trademarks, the metaphorical marketplace of ideas becomes
a tangible, powerful reality. To permit viewpoint discrimination in
this context is to permit Government censorship. Pp. 5–7.
ALITO, J., announced the judgment of the Court and delivered the
opinion of the Court with respect to Parts I, II, and III–A, in which
ROBERTS, C. J., and KENNEDY, GINSBURG, BREYER, SOTOMAYOR, and
KAGAN, JJ., joined, and in which THOMAS, J., joined except for Part II,
and an opinion with respect to Parts III–B, III–C, and IV, in which
ROBERTS, C. J., and THOMAS and BREYER, JJ., joined. KENNEDY, J., filed
an opinion concurring in part and concurring in the judgment, in which
GINSBURG, SOTOMAYOR, and KAGAN, JJ., joined. THOMAS, J., filed an
opinion concurring in part and concurring in the judgment. GORSUCH,
J., took no part in the consideration or decision of the case.
Cite as: 582 U. S. ____ (2017) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–1293
_________________
JOSEPH MATAL, INTERIM DIRECTOR, UNITED
STATES PATENT AND TRADEMARK OFFICE,
PETITIONER v. SIMON SHIAO TAM
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[June 19, 2017]
JUSTICE ALITO announced the judgment of the Court
and delivered the opinion of the Court with respect to
Parts I, II, and III–A, and an opinion with respect to Parts
III–B, III–C, and IV, in which THE CHIEF JUSTICE,
JUSTICE THOMAS, and JUSTICE BREYER join.
This case concerns a dance-rock band’s application for
federal trademark registration of the band’s name, “The
Slants.” “Slants” is a derogatory term for persons of Asian
descent, and members of the band are Asian-Americans.
But the band members believe that by taking that slur as
the name of their group, they will help to “reclaim” the
term and drain its denigrating force.
The Patent and Trademark Office (PTO) denied the
application based on a provision of federal law prohibiting
the registration of trademarks that may “disparage . . . or
bring . . . into contemp[t] or disrepute” any “persons, living
or dead.” 15 U.S. C. §1052(a). We now hold that this
provision violates the Free Speech Clause of the First
Amendment. It offends a bedrock First Amendment prin-
ciple: Speech may not be banned on the ground that it
2 MATAL v. TAM
Opinion of the Court
expresses ideas that offend.
I
A
“The principle underlying trademark protection is that
distinctive marks—words, names, symbols, and the like—
can help distinguish a particular artisan’s goods from
those of others.” B&B Hardware, Inc. v. Hargis Indus-
tries, Inc., 575 U. S. ___, ___ (2015) (slip op., at 3); see also
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S.
205, 212 (2000). A trademark “designate[s] the goods as
the product of a particular trader” and “protect[s] his good
will against the sale of another’s product as his.” United
Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97
(1918); see also Hanover Star Milling Co. v. Metcalf, 240
U.S. 403, 412–413 (1916). It helps consumers identify
goods and services that they wish to purchase, as well as
those they want to avoid. See Wal-Mart Stores, supra, at
212–213; Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469
U.S. 189, 198 (1985).
“[F]ederal law does not create trademarks.” B&B
Hardware, supra, at ___ (slip op., at 3). Trademarks and
their precursors have ancient origins, and trademarks
were protected at common law and in equity at the time of
the founding of our country. 3 J. McCarthy, Trademarks
and Unfair Competition §19:8 (4th ed. 2017) (hereinafter
McCarthy); 1 id., §§5:1, 5:2, 5:3; Pattishal, The Constitu-
tional Foundations of American Trademark Law, 78
Trademark Rep. 456, 457–458 (1988); Pattishall, Two
Hundred Years of American Trademark Law, 68 Trade-
mark Rep. 121, 121–123 (1978); see Trade-Mark Cases,
100 U.S. 82, 92 (1879). For most of the 19th century,
trademark protection was the province of the States. See
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780–
782 (1992) (Stevens, J., concurring in judgment); id., at
785 (THOMAS, J., concurring in judgment). Eventually,
Cite as: 582 U. S. ____ (2017) 3
Opinion of the Court
Congress stepped in to provide a degree of national uni-
formity, passing the first federal legislation protecting
trademarks in 1870. See Act of July 8, 1870, §§77–84, 16
Stat. 210–212. The foundation of current federal trade-
mark law is the Lanham Act, enacted in 1946. See Act of
July 5, 1946, ch. 540, 60 Stat. 427. By that time, trade-
mark had expanded far beyond phrases that do no more
than identify a good or service. Then, as now, trademarks
often consisted of catchy phrases that convey a message.
Under the Lanham Act, trademarks that are “used in
commerce” may be placed on the “principal register,” that
is, they may be federally registered. 15 U.S. C.
§1051(a)(1). And some marks “capable of distinguishing
[an] applicant’s goods or services and not registrable on
the principal register . . . which are in lawful use in com-
merce by the owner thereof ” may instead be placed on a
different federal register: the supplemental register.
§1091(a). There are now more than two million marks
that have active federal certificates of registration. PTO
Performance and Accountability Report, Fiscal Year 2016,
p. 192 (Table 15), https://www.uspto.gov/sites/default/files/
documents/USPTOFY16PAR.pdf (all Internet materials as
last visited June 16, 2017). This system of federal regis-
tration helps to ensure that trademarks are fully protected
and supports the free flow of commerce. “[N]ational pro-
tection of trademarks is desirable,” we have explained,
“because trademarks foster competition and the mainte-
nance of quality by securing to the producer the benefits of
good reputation.” San Francisco Arts & Athletics, Inc. v.
United States Olympic Comm., 483 U.S. 522, 531 (1987)
(internal quotation marks omitted); see also Park ’N Fly,
Inc., supra, at 198 (“The Lanham Act provides national
protection of trademarks in order to secure to the owner of
the mark the goodwill of his business and to protect the
ability of consumers to distinguish among competing
producers”).
4 MATAL v. TAM
Opinion of the Court
B
Without federal registration, a valid trademark may
still be used in commerce. See 3 McCarthy §19:8. And an
unregistered trademark can be enforced against would-be
infringers in several ways. Most important, even if a
trademark is not federally registered, it may still be en-
forceable under §43(a) of the Lanham Act, which creates a
federal cause of action for trademark infringement. See
Two Pesos, supra, at 768 (“Section 43(a) prohibits a broader
range of practices than does §32, which applies to regis-
tered marks, but it is common ground that §43(a) protects
qualifying unregistered trademarks” (internal quotation
marks and citation omitted)).1 Unregistered trademarks
may also be entitled to protection under other federal
statutes, such as the Anticybersquatting Consumer Pro-
tection Act, 15 U.S. C. §1125(d). See 5 McCarthy
§25A:49, at 25A–198 (“[T]here is no requirement [in the
Anticybersquatting Act] that the protected ‘mark’ be regis-
tered: unregistered common law marks are protected by
the Act”). And an unregistered trademark can be enforced
under state common law, or if it has been registered in a
State, under that State’s registration system. See 3 id.,
§19:3, at 19–23 (explaining that “[t]he federal system of
registration and protection does not preempt parallel state
——————
1 In the opinion below, the Federal Circuit opined that although “Sec-
tion 43(a) allows for a federal suit to protect an unregistered trade-
mark,” “it is not at all clear” that respondent could bring suit under
§43(a) because “there is no authority extending §43(a) to marks denied
under §2(a)’s disparagement provision.” In re Tam, 808 F.3d 1321,
1344–1345, n.11 (en banc), as corrected (Feb. 11, 2016). When drawing
this conclusion, the Federal Circuit relied in part on our statement in
Two Pesos that “the general principles qualifying a mark for registra-
tion under §2 of the Lanham Act are for the most part applicable in
determining whether an unregistered mark is entitled to protection
under §43(a).” 505 U.S., at 768. We need not decide today whether
respondent could bring suit under §43(a) if his application for federal
registration had been lawfully denied under the disparagement clause.
Cite as: 582 U. S. ____ (2017) 5
Opinion of the Court
law protection, either by state common law or state regis-
tration” and “[i]n the vast majority of situations, federal
and state trademark law peacefully coexist”); id., §22:1
(discussing state trademark registration systems).
Federal registration, however, “confers important legal
rights and benefits on trademark owners who register
their marks.” B&B Hardware, 575 U. S., at ___ (slip op.,
at 3) (internal quotation marks omitted). Registration on
the principal register (1) “serves as ‘constructive notice of
the registrant’s claim of ownership’ of the mark,” ibid.
(quoting 15 U.S. C. §1072); (2) “is ‘prima facie evidence of
the validity of the registered mark and of the registration
of the mark, of the owner’s ownership of the mark, and of
the owner’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services
specified in the certificate,’ ” B & B Hardware, 575 U. S.
___ (slip op., at 3) (quoting §1057(b)); and (3) can make a
mark “ ‘incontestable’ ” once a mark has been registered for
five years,” ibid. (quoting §§1065, 1115(b)); see Park ’N
Fly, 469 U.S., at 193. Registration also enables the
trademark holder “to stop the importation into the United
States of articles bearing an infringing mark.” 3 Mc-
Carthy §19:9, at 19–38; see 15 U.S. C. §1124.
C
The Lanham Act contains provisions that bar certain
trademarks from the principal register. For example, a
trademark cannot be registered if it is “merely descriptive or
deceptively misdescriptive” of goods, §1052(e)(1), or if it is so
similar to an already registered trademark or trade name
that it is “likely . . . to cause confusion, or to cause mistake,
or to deceive,” §1052(d).
At issue in this case is one such provision, which we will
call “the disparagement clause.” This provision prohibits the
registration of a trademark “which may disparage . . . per-
sons, living or dead, institutions, beliefs, or national symbols,
6 MATAL v. TAM
Opinion of the Court
or bring them into contempt, or disrepute.” §1052(a).2 This
clause appeared in the original Lanham Act and has re-
mained the same to this day. See §2(a), 60 Stat. 428.
When deciding whether a trademark is disparaging, an
examiner at the PTO generally applies a “two-part test.”
The examiner first considers “the likely meaning of the
matter in question, taking into account not only dictionary
definitions, but also the relationship of the matter to the
other elements in the mark, the nature of the goods or
services, and the manner in which the mark is used in the
marketplace in connection with the goods or services.”
Trademark Manual of Examining Procedure §1203.03(b)(i)
(Apr. 2017), p. 1200–150, http://tmep.uspto.gov. “If that
meaning is found to refer to identifiable persons, institu-
tions, beliefs or national symbols,” the examiner moves to
the second step, asking “whether that meaning may be
disparaging to a substantial composite3 of the referenced
group.” Ibid. If the examiner finds that a “substantial
composite, although not necessarily a majority, of the
referenced group would find the proposed mark . . . to be
disparaging in the context of contemporary attitudes,” a
prima facie case of disparagement is made out, and the
burden shifts to the applicant to prove that the trademark
is not disparaging. Ibid. What is more, the PTO has
specified that “[t]he fact that an applicant may be a mem-
ber of that group or has good intentions underlying its use
of a term does not obviate the fact that a substantial
composite of the referenced group would find the term
objectionable.” Ibid.
D
Simon Tam is the lead singer of “The Slants.” In re
Tam, 808 F.3d 1321, 1331 (CA Fed. 2015) (en banc), as
——————
2 The disparagement clause also prevents a trademark from being
registered on the supplemental register. §1091(a).
3 By “composite,” we assume the PTO means component.
Cite as: 582 U. S. ____ (2017) 7
Opinion of the Court
corrected (Feb. 11, 2016). He chose this moniker in order
to “reclaim” and “take ownership” of stereotypes about
people of Asian ethnicity. Ibid. (internal quotation marks
omitted). The group “draws inspiration for its lyrics from
childhood slurs and mocking nursery rhymes” and has
given its albums names such as “The Yellow Album” and
“Slanted Eyes, Slanted Hearts.” Ibid.
Tam sought federal registration of “THE SLANTS,” on
the principal register, App. 17, but an examining attorney
at the PTO rejected the request, applying the PTO’s two-
part framework and finding that “there is . . . a substan-
tial composite of persons who find the term in the applied-
for mark offensive.” Id., at 30. The examining attorney
relied in part on the fact that “numerous dictionaries
define ‘slants’ or ‘slant-eyes’ as a derogatory or offensive
term.” Id., at 29. The examining attorney also relied on a
finding that “the band’s name has been found offensive
numerous times”—citing a performance that was canceled
because of the band’s moniker and the fact that “several
bloggers and commenters to articles on the band have
indicated that they find the term and the applied-for mark
offensive.” Id., at 29–30.
Tam contested the denial of registration before the
examining attorney and before the PTO’s Trademark Trial
and Appeal Board (TTAB) but to no avail. Eventually, he
took the case to federal court, where the en banc Federal
Circuit ultimately found the disparagement clause facially
unconstitutional under the First Amendment’s Free
Speech Clause. The majority found that the clause en-
gages in viewpoint-based discrimination, that the clause
regulates the expressive component of trademarks and
consequently cannot be treated as commercial speech, and
that the clause is subject to and cannot satisfy strict scru-
tiny. See 808 F.3d, at 1334–1339. The majority also
rejected the Government’s argument that registered
trademarks constitute government speech, as well as the
8 MATAL v. TAM
Opinion of the Court
Government’s contention that federal registration is a
form of government subsidy. See id., at 1339–1355. And
the majority opined that even if the disparagement clause
were analyzed under this Court’s commercial speech
cases, the clause would fail the “intermediate scrutiny”
that those cases prescribe. See id., at 1355–1357.
Several judges wrote separately, advancing an assort-
ment of theories. Concurring, Judge O’Malley agreed with
the majority’s reasoning but added that the disparage-
ment clause is unconstitutionally vague. See id., at 1358–
1363. Judge Dyk concurred in part and dissented in part.
He argued that trademark registration is a government
subsidy and that the disparagement clause is facially
constitutional, but he found the clause unconstitutional as
applied to THE SLANTS because that mark constitutes
“core expression” and was not adopted for the purpose of
disparaging Asian-Americans. See id., at 1363–1374. In
dissent, Judge Lourie agreed with Judge Dyk that the
clause is facially constitutional but concluded for a variety
of reasons that it is also constitutional as applied in this
case. See id., at 1374–1376. Judge Reyna also dissented,
maintaining that trademarks are commercial speech and
that the disparagement clause survives intermediate
scrutiny because it “directly advances the government’s
substantial interest in the orderly flow of commerce.” See
id., at 1376–1382.
The Government filed a petition for certiorari, which we
granted in order to decide whether the disparagement
clause “is facially invalid under the Free Speech Clause of
the First Amendment.” Pet. for Cert. i; see sub. nom. Lee
v. Tam, 579 U. S. ___ (2016).
II
Before reaching the question whether the disparage-
ment clause violates the First Amendment, we consider
Tam’s argument that the clause does not reach marks that
Cite as: 582 U. S. ____ (2017) 9
Opinion of the Court
disparage racial or ethnic groups. The clause prohibits the
registration of marks that disparage “persons,” and Tam
claims that the term “persons” “includes only natural and
juristic persons,” not “non-juristic entities such as racial
and ethnic groups.” Brief for Respondent 46.
Tam never raised this argument before the PTO or the
Federal Circuit, and we declined to grant certiorari on this
question when Tam asked us to do so, see Brief Respond-
ing to Petition for Certiorari, pp. i, 17–21. Normally, that
would be the end of the matter in this Court. See, e.g., Yee
v. Escondido, 503 U.S. 519, 534–538 (1992); Freytag v.
Commissioner, 501 U.S. 868, 894–895 (1991) (Scalia, J.,
concurring in part and concurring in judgment).
But as the Government pointed out in connection with
its petition for certiorari, accepting Tam’s statutory inter-
pretation would resolve this case and leave the First
Amendment question for another day. See Reply Brief 9.
“[W]e have often stressed” that it is “importan[t] [to]
avoid[d] the premature adjudication of constitutional
questions,” Clinton v. Jones, 520 U.S. 681, 690 (1997), and
that “we ought not to pass on questions of constitutionality
. . . unless such adjudication is unavoidable,” Spector
Motor Service, Inc. v. McLaughlin, 323 U.S. 101, 105
(1944). See also Alabama State Federation of Labor v.
McAdory, 325 U.S. 450, 461 (1945); Burton v. United
States, 196 U.S. 283, 295 (1905). We thus begin by ex-
plaining why Tam’s argument about the definition of
“persons” in the Lanham Act is meritless.
As noted, the disparagement clause prohibits the regis-
tration of trademarks “which may disparage . . . persons,
living or dead.” 15 U.S. C. §1052(a). Tam points to a
definition of “person” in the Lanham Act, which provides
that “[i]n the construction of this chapter, unless the
contrary is plainly apparent from the context . . . [t]he
term ‘person’ and any other word or term used to desig-
nate the applicant or other entitled to a benefit or privi-
10 MATAL v. TAM
Opinion of the Court
lege or rendered liable under the provisions of this chapter
includes a juristic person as well as a natural person.”
§1127. Because racial and ethnic groups are neither
natural nor “juristic” persons, Tam asserts, these groups
fall outside this definition. Brief for Respondent 46–48.
Tam’s argument is refuted by the plain terms of the
disparagement clause. The clause applies to marks that
disparage “persons.” A mark that disparages a “substan-
tial” percentage of the members of a racial or ethnic group,
Trademark Manual §1203.03(b)(i), at 1200–150, necessar-
ily disparages many “persons,” namely, members of that
group. Tam’s argument would fail even if the clause used
the singular term “person,” but Congress’ use of the plural
“persons” makes the point doubly clear.4
Tam’s narrow reading of the term “persons” also clashes
with the breadth of the disparagement clause. By its
terms, the clause applies to marks that disparage, not just
“persons,” but also “institutions” and “beliefs.” 15 U.S. C.
§1052(a). It thus applies to the members of any group
whose members share particular “beliefs,” such as politi-
cal, ideological, and religious groups. It applies to marks
that denigrate “institutions,” and on Tam’s reading, it also
reaches “juristic” persons such as corporations, unions,
and other unincorporated associations. See §1127. Thus,
the clause is not limited to marks that disparage a partic-
ular natural person. If Congress had wanted to confine
——————
4 Tam advances a convoluted textual argument that goes as follows.
The definition of a “person” in 15 U.S. C. §1127 does not include a
“non-juristic person,” i.e., a group that cannot sue or be sued in its own
right. Brief for Respondent 46–47. Such groups consist of multiple
natural persons. Therefore, the members of such groups are not
“persons” under the disparagement clause. Id., at 46–48.
This argument leads to the absurd result that no person is a “person”
within the meaning of the disparagement clause. This is so because
every person is a member of a “non-juristic” group, e.g., right-handers,
left-handers, women, men, people born on odd-numbered days, people
born on even-numbered days.
Cite as: 582 U. S. ____ (2017) 11
Opinion of the Court
the reach of the disparagement clause in the way that
Tam suggests, it would have been easy to do so. A neigh-
boring provision of the Lanham Act denies registration to
any trademark that “[c]onsists of or comprises a name,
portrait, or signature identifying a particular living indi-
vidual except by his written consent.” §1052(c) (emphasis
added).
Tam contends that his interpretation of the disparage-
ment clause is supported by its legislative history and by
the PTO’s willingness for many years to register marks
that plainly denigrated African-Americans and Native
Americans. These arguments are unpersuasive. As al-
ways, our inquiry into the meaning of the statute’s text
ceases when “the statutory language is unambiguous and
the statutory scheme is coherent and consistent.” Barn-
hart v. Sigmon Coal Co., 534 U.S. 438, 450 (2002) (inter-
nal quotation marks omitted). Here, it is clear that the
prohibition against registering trademarks “which may
disparage . . . persons,” §1052(a), prohibits registration of
terms that disparage persons who share a common race or
ethnicity.
Even if resort to legislative history and early enforce-
ment practice were appropriate, we would find Tam’s
arguments unconvincing. Tam has not brought to our
attention any evidence in the legislative history showing
that Congress meant to adopt his interpretation. And the
practice of the PTO in the years following the enactment
of the disparagement clause is unenlightening. The ad-
mitted vagueness of the disparagement test5 and the huge
——————
5 The PTO has acknowledged that the guidelines “for determining
whether a mark is scandalous or disparaging are somewhat vague and
the determination of whether a mark is scandalous or disparaging is
necessarily a highly subjective one.” In re In Over Our Heads, Inc., 16
U.S.P.Q. 2d (BNA) 1653, 1654 (TTAB 1990) (brackets and internal quotation
marks omitted). The PTO has similarly observed that whether a mark
is disparaging “is highly subjective and, thus, general rules are difficult
12 MATAL v. TAM
Opinion of the Court
volume of applications have produced a haphazard record
of enforcement. (Even today, the principal register is
replete with marks that many would regard as disparag-
ing to racial and ethnic groups.6) Registration of the
offensive marks that Tam cites is likely attributable not to
the acceptance of his interpretation of the clause but to
other factors—most likely the regrettable attitudes and
sensibilities of the time in question.
III
Because the disparagement clause applies to marks that
disparage the members of a racial or ethnic group, we
must decide whether the clause violates the Free Speech
Clause of the First Amendment. And at the outset, we
must consider three arguments that would either elimi-
nate any First Amendment protection or result in highly
permissive rational-basis review. Specifically, the Gov-
ernment contends (1) that trademarks are government
speech, not private speech, (2) that trademarks are a form
of government subsidy, and (3) that the constitutionality
of the disparagement clause should be tested under a new
“government-program” doctrine. We address each of these
arguments below.
A
The First Amendment prohibits Congress and other
government entities and actors from “abridging the free-
dom of speech”; the First Amendment does not say that
Congress and other government entities must abridge
their own ability to speak freely. And our cases recognize
that “[t]he Free Speech Clause . . . does not regulate gov-
ernment speech.” Pleasant Grove City v. Summum, 555
——————
to postulate.” Harjo v. Pro-Football Inc., 50 U.S.P.Q. 2d (BNA) 1705, 1737 (TTAB
1999), rev’d, 284 F. Supp. 2d 96 (DC 2003), rev’d and remanded in part,
415 F.3d 44 (CADC 2005) (per curiam).
6 See, e.g., App. to Brief for Pro-Football, Inc., as Amicus Curiae.
Cite as: 582 U. S. ____ (2017) 13
Opinion of the Court
U. S. 460, 467 (2009); see Johanns v. Livestock Marketing
Assn., 544 U.S. 550, 553 (2005) (“[T]he Government’s own
speech . . . is exempt from First Amendment scrutiny”);
Board of Regents of Univ. of Wis. System v. Southworth,
529 U.S. 217, 235 (2000).
As we have said, “it is not easy to imagine how govern-
ment could function” if it were subject to the restrictions
that the First Amendment imposes on private speech.
Summum, supra, at 468; see Walker v. Texas Div., Sons of
Confederate Veterans, Inc., 576 U. S. ___, ___–___ (2015)
(slip op., at 5–7). “ ‘[T]he First Amendment forbids the
government to regulate speech in ways that favor some
viewpoints or ideas at the expense of others,’ ” Lamb’s
Chapel v. Center Moriches Union Free School Dist., 508
U.S. 384, 394 (1993), but imposing a requirement of
viewpoint-neutrality on government speech would be para-
lyzing. When a government entity embarks on a course
of action, it necessarily takes a particular viewpoint
and rejects others. The Free Speech Clause does not re-
quire government to maintain viewpoint neutrality when
its officers and employees speak about that venture.
Here is a simple example. During the Second World
War, the Federal Government produced and distributed
millions of posters to promote the war effort.7 There were
posters urging enlistment, the purchase of war bonds, and
the conservation of scarce resources.8 These posters ex-
pressed a viewpoint, but the First Amendment did not
demand that the Government balance the message of
these posters by producing and distributing posters en-
couraging Americans to refrain from engaging in these
activities.
But while the government-speech doctrine is im-
portant—indeed, essential—it is a doctrine that is suscep-
——————
7 See, e.g., D. Nelson, The Posters That Won the War (1991).
8 Ibid.
14 MATAL v. TAM
Opinion of the Court
tible to dangerous misuse. If private speech could be
passed off as government speech by simply affixing a
government seal of approval, government could silence or
muffle the expression of disfavored viewpoints. For this
reason, we must exercise great caution before extending
our government-speech precedents.
At issue here is the content of trademarks that are
registered by the PTO, an arm of the Federal Government.
The Federal Government does not dream up these marks,
and it does not edit marks submitted for registration.
Except as required by the statute involved here, 15
U.S. C. §1052(a), an examiner may not reject a mark
based on the viewpoint that it appears to express. Thus,
unless that section is thought to apply, an examiner does
not inquire whether any viewpoint conveyed by a mark is
consistent with Government policy or whether any such
viewpoint is consistent with that expressed by other
marks already on the principal register. Instead, if the
mark meets the Lanham Act’s viewpoint-neutral require-
ments, registration is mandatory. Ibid. (requiring that
“[n]o trademark . . . shall be refused registration on the
principal register on account of its nature unless” it falls
within an enumerated statutory exception). And if an
examiner finds that a mark is eligible for placement on the
principal register, that decision is not reviewed by any
higher official unless the registration is challenged. See
§§1062(a), 1071; 37 CFR §41.31(a) (2016). Moreover, once
a mark is registered, the PTO is not authorized to remove
it from the register unless a party moves for cancellation,
the registration expires, or the Federal Trade Commission
initiates proceedings based on certain grounds. See 15
U.S. C. §§1058(a), 1059, 1064; 37 CFR §§2.111(b), 2.160.
In light of all this, it is far-fetched to suggest that the
content of a registered mark is government speech. If the
federal registration of a trademark makes the mark gov-
ernment speech, the Federal Government is babbling
Cite as: 582 U. S. ____ (2017) 15
Opinion of the Court
prodigiously and incoherently. It is saying many unseemly
things. See App. to Brief for Pro-Football, Inc., as Amicus
Curiae. It is expressing contradictory views.9 It is una-
shamedly endorsing a vast array of commercial products
and services. And it is providing Delphic advice to the
consuming public.
For example, if trademarks represent government
speech, what does the Government have in mind when it
advises Americans to “make.believe” (Sony),10 “Think
different” (Apple),11 “Just do it” (Nike),12 or “Have it your
way” (Burger King)13? Was the Government warning
about a coming disaster when it registered the mark
“EndTime Ministries”14?
The PTO has made it clear that registration does not
constitute approval of a mark. See In re Old Glory Con-
dom Corp., 26 U.S.P.Q. 2d (BNA) 1216, 1220, n. 3 (TTAB 1993)
(“[I]ssuance of a trademark registration . . . is not a gov-
ernment imprimatur”). And it is unlikely that more than
a tiny fraction of the public has any idea what federal
registration of a trademark means. See Application of
National Distillers & Chemical Corp., 49 Cow. C. P. A. (Pat.)
854, 863, 297 F.2d 941, 949 (1962) (Rich, J., concurring)
(“The purchasing public knows no more about trademark
registrations than a man walking down the street in a
——————
9 Compare “Abolish Abortion,” Registration No. 4,935,774 (Apr. 12,
2016), with “I Stand With Planned Parenthood,” Registration No.
5,073,573 (Nov. 1, 2016); compare “Capitalism Is Not Moral, Not Fair,
Not Freedom,” Registration No. 4,696,419 (Mar. 3, 2015), with “Capital-
ism Ensuring Innovation,” Registration No. 3,966,092 (May 24, 2011);
compare “Global Warming Is Good,” Registration No. 4,776,235 (July
21, 2015), with “A Solution to Global Warming,” Registration No.
3,875,271 (Nov. 10, 2010).
10 “make.believe,” Registration No. 4,342,903 (May 28, 2013).
11 “Think Different,” Registration No. 2,707,257 (Apr. 15, 2003).
12 “Just Do It,” Registration No. 1,875,307 (Jan. 25, 1995).
13 “Have It Your Way,” Registration No. 0,961,016. (June 12, 1973)
14 “EndTime Ministries,” Registration No. 4,746,225 (June 2, 2015).
16 MATAL v. TAM
Opinion of the Court
strange city knows about legal title to the land and build-
ings he passes” (emphasis deleted)).
None of our government speech cases even remotely
supports the idea that registered trademarks are govern-
ment speech. In Johanns, we considered advertisements
promoting the sale of beef products. A federal statute
called for the creation of a program of paid advertising “ ‘to
advance the image and desirability of beef and beef prod-
ucts.’ ” 544 U.S., at 561 (quoting 7 U.S. C. § 2902(13)).
Congress and the Secretary of Agriculture provided guide-
lines for the content of the ads, Department of Agriculture
officials attended the meetings at which the content of
specific ads was discussed, and the Secretary could edit or
reject any proposed ad. 544 U.S., at 561. Noting that
“[t]he message set out in the beef promotions [was] from
beginning to end the message established by the Federal
Government,” we held that the ads were government
speech. Id., at 560. The Government’s involvement in the
creation of these beef ads bears no resemblance to any-
thing that occurs when a trademark is registered.
Our decision in Summum is similarly far afield. A small
city park contained 15 monuments. 555 U.S., at 464.
Eleven had been donated by private groups, and one of
these displayed the Ten Commandments. Id., at 464–465.
A religious group claimed that the city, by accepting do-
nated monuments, had created a limited public forum for
private speech and was therefore obligated to place in the
park a monument expressing the group’s religious beliefs.
Holding that the monuments in the park represented
government speech, we cited many factors. Governments
have used monuments to speak to the public since ancient
times; parks have traditionally been selective in accepting
and displaying donated monuments; parks would be over-
run if they were obligated to accept all monuments offered
by private groups; “[p]ublic parks are often closely identi-
fied in the public mind with the government unit that
Cite as: 582 U. S. ____ (2017) 17
Opinion of the Court
owns the land”; and “[t]he monuments that are accepted
. . . are meant to convey and have the effect of conveying a
government message.” Id., at 472.
Trademarks share none of these characteristics.
Trademarks have not traditionally been used to convey a
Government message. With the exception of the enforce-
ment of 15 U.S. C. §1052(a), the viewpoint expressed by a
mark has not played a role in the decision whether to
place it on the principal register. And there is no evidence
that the public associates the contents of trademarks with
the Federal Government.
This brings us to the case on which the Government
relies most heavily, Walker, which likely marks the outer
bounds of the government-speech doctrine. Holding that
the messages on Texas specialty license plates are gov-
ernment speech, the Walker Court cited three factors
distilled from Summum. 576 U. S., at ___–___ (slip op., at
7–8). First, license plates have long been used by the
States to convey state messages. Id., at ___–___ (slip op.,
at 9–10). Second, license plates “are often closely identi-
fied in the public mind” with the State, since they are
manufactured and owned by the State, generally designed
by the State, and serve as a form of “government ID.” Id.,
at ___ (slip op., at 10) (internal quotation marks omitted).
Third, Texas “maintain[ed] direct control over the mes-
sages conveyed on its specialty plates.” Id., at ___ (slip
op., at 11). As explained above, none of these factors are
present in this case.
In sum, the federal registration of trademarks is vastly
different from the beef ads in Johanns, the monuments in
Summum, and even the specialty license plates in Walker.
Holding that the registration of a trademark converts the
mark into government speech would constitute a huge and
dangerous extension of the government-speech doctrine.
For if the registration of trademarks constituted govern-
ment speech, other systems of government registration
18 MATAL v. TAM
Opinion
Opinion of
of the Court
ALITO, J.
could easily be characterized in the same way.
Perhaps the most worrisome implication of the Govern-
ment’s argument concerns the system of copyright regis-
tration. If federal registration makes a trademark gov-
ernment speech and thus eliminates all First Amendment
protection, would the registration of the copyright for a
book produce a similar transformation? See 808 F.3d, at
1346 (explaining that if trademark registration amounts
to government speech, “then copyright registration” which
“has identical accoutrements” would “likewise amount to
government speech”).
The Government attempts to distinguish copyright on
the ground that it is “ ‘the engine of free expression,’ ” Brief
for Petitioner 47 (quoting Eldred v. Ashcroft, 537 U.S.
186, 219 (2003)), but as this case illustrates, trademarks
often have an expressive content. Companies spend huge
amounts to create and publicize trademarks that convey a
message. It is true that the necessary brevity of trade-
marks limits what they can say. But powerful messages
can sometimes be conveyed in just a few words.
Trademarks are private, not government, speech.
B
We next address the Government’s argument that this
case is governed by cases in which this Court has upheld
the constitutionality of government programs that subsi-
dized speech expressing a particular viewpoint. These
cases implicate a notoriously tricky question of constitu-
tional law. “[W]e have held that the Government ‘may not
deny a benefit to a person on a basis that infringes his
constitutionally protected . . . freedom of speech even if he
has no entitlement to that benefit.’ ” Agency for Int’l De-
velopment v. Alliance for Open Society Int’l, Inc., 570 U. S.
___, ___ (2013) (slip op., at 8) (some internal quotation
marks omitted). But at the same time, government is not
required to subsidize activities that it does not wish to
Cite as: 582 U. S. ____ (2017) 19
Opinion
Opinion of
of the Court
ALITO, J.
promote. Ibid. Determining which of these principles
applies in a particular case “is not always self-evident,”
id., at ___ (slip op., at 11), but no difficult question is
presented here.
Unlike the present case, the decisions on which the
Government relies all involved cash subsidies or their
equivalent. In Rust v. Sullivan, 500 U.S. 173 (1991), a
federal law provided funds to private parties for family
planning services. In National Endowment for Arts v.
Finley, 524 U.S. 569 (1998), cash grants were awarded to
artists. And federal funding for public libraries was at
issue in United States v. American Library Assn., Inc., 539
U.S. 194 (2003). In other cases, we have regarded tax
benefits as comparable to cash subsidies. See Regan v.
Taxation With Representation of Wash., 461 U.S. 540
(1983); Cammarano v. United States, 358 U. S 498 (1959).
The federal registration of a trademark is nothing like
the programs at issue in these cases. The PTO does not
pay money to parties seeking registration of a mark.
Quite the contrary is true: An applicant for registration
must pay the PTO a filing fee of $225–$600. 37 CFR
§2.6(a)(1). (Tam submitted a fee of $275 as part of his
application to register THE SLANTS. App. 18.) And to
maintain federal registration, the holder of a mark must
pay a fee of $300–$500 every 10 years. §2.6(a)(5); see also
15 U.S. C. §1059(a). The Federal Circuit concluded that
these fees have fully supported the registration system for
the past 27 years. 808 F.3d, at 1353.
The Government responds that registration provides
valuable non-monetary benefits that “are directly trace-
able to the resources devoted by the federal government to
examining, publishing, and issuing certificates of registra-
tion for those marks.” Brief for Petitioner 27. But just
about every government service requires the expenditure
of government funds. This is true of services that benefit
everyone, like police and fire protection, as well as services
20 MATAL v. TAM
Opinion
Opinion of
of the Court
ALITO, J.
that are utilized by only some, e.g., the adjudication of
private lawsuits and the use of public parks and highways.
Trademark registration is not the only government
registration scheme. For example, the Federal Govern-
ment registers copyrights and patents. State governments
and their subdivisions register the title to real property
and security interests; they issue driver’s licenses, motor
vehicle registrations, and hunting, fishing, and boating
licenses or permits.
Cases like Rust and Finley are not instructive in analyz-
ing the constitutionality of restrictions on speech imposed
in connection with such services.
C
Finally, the Government urges us to sustain the dispar-
agement clause under a new doctrine that would apply to
“government-program” cases. For the most part, this
argument simply merges our government-speech cases
and the previously discussed subsidy cases in an attempt
to construct a broader doctrine that can be applied to the
registration of trademarks. The only new element in this
construct consists of two cases involving a public employ-
er’s collection of union dues from its employees. But
those cases occupy a special area of First Amendment case
law, and they are far removed from the registration of
trademarks.
In Davenport v. Washington Ed. Assn., 551 U.S. 177,
181–182 (2007), a Washington law permitted a public
employer automatically to deduct from the wages of em-
ployees who chose not to join the union the portion of
union dues used for activities related to collective bargain-
ing. But unless these employees affirmatively consented,
the law did not allow the employer to collect the portion of
union dues that would be used in election activities. Id.,
at 180–182. A public employee union argued that this law
unconstitutionally restricted its speech based on its con-
Cite as: 582 U. S. ____ (2017) 21
Opinion
Opinion of
of the Court
ALITO, J.
tent; that is, the law permitted the employer to assist
union speech on matters relating to collective bargaining
but made it harder for the union to collect money to sup-
port its election activities. Id., at 188. Upholding this law,
we characterized it as imposing a “modest limitation” on
an “extraordinary benefit,” namely, taking money from the
wages of non-union members and turning it over to the
union free of charge. Id., at 184. Refusing to confer an
even greater benefit, we held, did not upset the market-
place of ideas and did not abridge the union’s free speech
rights. Id., at 189–190.
Ysursa v. Pocatello Ed. Assn., 555 U.S. 353 (2009), is
similar. There, we considered an Idaho law that allowed
public employees to elect to have union dues deducted
from their wages but did not allow such a deduction for
money remitted to the union’s political action committee.
Id., at 355. We reasoned that the “the government . . .
[was] not required to assist others in funding the expres-
sion of particular ideas.” Id., at 358; see also id., at 355
(“The First Amendment . . . does not confer an affirmative
right to use government payroll mechanisms for the pur-
pose of obtaining funds for expression”).
Davenport and Ysursa are akin to our subsidy cases.
Although the laws at issue in Davenport and Ysursa did
not provide cash subsidies to the unions, they conferred a
very valuable benefit—the right to negotiate a collective-
bargaining agreement under which non-members would
be obligated to pay an agency fee that the public employer
would collect and turn over to the union free of charge. As
in the cash subsidy cases, the laws conferred this benefit
because it was thought that this arrangement served
important government interests. See Abood v. Detroit Bd.
of Ed., 431 U.S. 209, 224–226 (1977). But the challenged
laws did not go further and provide convenient collection
mechanisms for money to be used in political activities. In
essence, the Washington and Idaho lawmakers chose to
22 MATAL v. TAM
Opinion
Opinion of
of the Court
ALITO, J.
confer a substantial non-cash benefit for the purpose of
furthering activities that they particularly desired to
promote but not to provide a similar benefit for the pur-
pose of furthering other activities. Thus, Davenport and
Ysursa are no more relevant for present purposes than the
subsidy cases previously discussed.15
Potentially more analogous are cases in which a unit of
government creates a limited public forum for private
speech. See, e.g., Good News Club v. Milford Central
School, 533 U.S. 98, 106–107 (2001); Rosenberger v. Rec-
tor and Visitors of Univ. of Va., 515 U.S. 819, 831 (1995);
Lamb’s Chapel, 508 U.S., at 392–393. See also Legal
Services Corporation v. Velazquez, 531 U.S. 533, 541–544
(2001). When government creates such a forum, in either
a literal or “metaphysical” sense, see Rosenberger, 515
U.S., at 830, some content- and speaker-based restrictions
may be allowed, see id., at 830–831. However, even in
such cases, what we have termed “viewpoint discrimina-
tion” is forbidden. Id., at 831.
Our cases use the term “viewpoint” discrimination in a
broad sense, see ibid., and in that sense, the disparage-
ment clause discriminates on the bases of “viewpoint.” To
be sure, the clause evenhandedly prohibits disparagement
of all groups. It applies equally to marks that damn Dem-
ocrats and Republicans, capitalists and socialists, and
those arrayed on both sides of every possible issue. It
denies registration to any mark that is offensive to a
substantial percentage of the members of any group. But
in the sense relevant here, that is viewpoint discrimina-
tion: Giving offense is a viewpoint.
We have said time and again that “the public expression
——————
15 While these cases resemble subsidy cases insofar as the free speech
rights of unions and their members are concerned, arrangements like
those in these cases also implicate the free speech rights of non-union
members. Our decision here has no bearing on that issue.
Cite as: 582 U. S. ____ (2017) 23
Opinion
Opinion of
of the Court
ALITO, J.
of ideas may not be prohibited merely because the ideas
are themselves offensive to some of their hearers.” Street
v. New York, 394 U.S. 576, 592 (1969). See also Texas v.
Johnson, 491 U.S. 397, 414 (1989) (“If there is a bedrock
principle underlying the First Amendment, it is that the
government may not prohibit the expression of an idea
simply because society finds the idea itself offensive or
disagreeable”); Hustler Magazine, Inc. v. Falwell, 485 U.S.
46, 55–56 (1988); Coates v. Cincinnati, 402 U.S. 611, 615
(1971); Bachellar v. Maryland, 397 U.S. 564, 567 (1970);
Tinker v. Des Moines Independent Community School
Dist., 393 U.S. 503, 509–514 (1969); Cox v. Louisiana, 379
U.S. 536, 551 (1965); Edwards v. South Carolina, 372 U.S.
229, 237–238 (1963); Terminiello v. Chicago, 337 U.S. 1,
4–5 (1949); Cantwell v. Connecticut, 310 U.S. 296, 311
(1940); Schneider v. State (Town of Irvington), 308 U.S.
147, 161 (1939); De Jonge v. Oregon, 299 U.S. 353, 365
(1937).
For this reason, the disparagement clause cannot be
saved by analyzing it as a type of government program in
which some content- and speaker-based restrictions are
permitted.16
IV
Having concluded that the disparagement clause cannot
be sustained under our government-speech or subsidy
cases or under the Government’s proposed “government-
program” doctrine, we must confront a dispute between
the parties on the question whether trademarks are com-
mercial speech and are thus subject to the relaxed scrutiny
outlined in Central Hudson Gas & Elec. Corp. v. Public
Serv. Comm’n of N. Y., 447 U.S. 557 (1980). The Govern-
ment and amici supporting its position argue that all
——————
16 We leave open the question whether this is the appropriate frame-
work for analyzing free speech challenges to provisions of the Lanham
Act.
24 MATAL v. TAM
Opinion
Opinion of
of the Court
ALITO, J.
trademarks are commercial speech. They note that the
central purposes of trademarks are commercial and that
federal law regulates trademarks to promote fair and
orderly interstate commerce. Tam and his amici, on the
other hand, contend that many, if not all, trademarks
have an expressive component. In other words, these
trademarks do not simply identify the source of a product
or service but go on to say something more, either about
the product or service or some broader issue. The trade-
mark in this case illustrates this point. The name “The
Slants” not only identifies the band but expresses a view
about social issues.
We need not resolve this debate between the parties
because the disparagement clause cannot withstand even
Central Hudson review.17 Under Central Hudson, a re-
striction of speech must serve “a substantial interest,” and
it must be “narrowly drawn.” Id., at 564–565 (internal
quotation marks omitted). This means, among other
things, that “[t]he regulatory technique may extend only
as far as the interest it serves.” Id., at 565. The dispar-
agement clause fails this requirement.
It is claimed that the disparagement clause serves two
interests. The first is phrased in a variety of ways in the
briefs. Echoing language in one of the opinions below, the
Government asserts an interest in preventing “ ‘un-
derrepresented groups’ ” from being “ ‘bombarded with
demeaning messages in commercial advertising.’ ” Brief
for Petitioner 48 (quoting 808 F.3d, at 1364 (Dyk, J.,
concurring in part and dissenting in part)). An amicus
supporting the Government refers to “encouraging racial
——————
17 As with the framework discussed in Part III–C of this opinion, we
leave open the question whether Central Hudson provides the appro-
priate test for deciding free speech challenges to provisions of the
Lanham Act. And nothing in our decision should be read to speak to
the validity of state unfair competition provisions or product libel laws
that are not before us and differ from §1052(d)’s disparagement clause.
Cite as: 582 U. S. ____ (2017) 25
Opinion
Opinion of
of the Court
ALITO, J.
tolerance and protecting the privacy and welfare of indi-
viduals.” Brief for Native American Organizations as
Amici Curiae 21. But no matter how the point is phrased,
its unmistakable thrust is this: The Government has an
interest in preventing speech expressing ideas that offend.
And, as we have explained, that idea strikes at the heart
of the First Amendment. Speech that demeans on the
basis of race, ethnicity, gender, religion, age, disability, or
any other similar ground is hateful; but the proudest boast
of our free speech jurisprudence is that we protect the
freedom to express “the thought that we hate.” United
States v. Schwimmer, 279 U.S. 644, 655 (1929) (Holmes,
J., dissenting).
The second interest asserted is protecting the orderly
flow of commerce. See 808 F.3d, at 1379–1381 (Reyna, J.,
dissenting); Brief for Petitioner 49; Brief for Native Amer-
ican Organizations as Amicus Curiae 18–21. Commerce,
we are told, is disrupted by trademarks that “involv[e]
disparagement of race, gender, ethnicity, national origin,
religion, sexual orientation, and similar demographic
classification.” 808 F.3d, at 1380–1381 (opinion of Reyna,
J.). Such trademarks are analogized to discriminatory
conduct, which has been recognized to have an adverse
effect on commerce. See ibid.; Brief for Petitioner 49;
Brief for Native American Organizations as Amici Curiae
18–20.
A simple answer to this argument is that the dispar-
agement clause is not “narrowly drawn” to drive out
trademarks that support invidious discrimination. The
clause reaches any trademark that disparages any person,
group, or institution. It applies to trademarks like the
following: “Down with racists,” “Down with sexists,”
“Down with homophobes.” It is not an anti-discrimination
clause; it is a happy-talk clause. In this way, it goes much
further than is necessary to serve the interest asserted.
The clause is far too broad in other ways as well. The
26 MATAL v. TAM
Opinion
Opinion of
of the Court
ALITO, J.
clause protects every person living or dead as well as every
institution. Is it conceivable that commerce would be
disrupted by a trademark saying: “James Buchanan was a
disastrous president” or “Slavery is an evil institution”?
There is also a deeper problem with the argument that
commercial speech may be cleansed of any expression
likely to cause offense. The commercial market is well
stocked with merchandise that disparages prominent
figures and groups, and the line between commercial and
non-commercial speech is not always clear, as this case
illustrates. If affixing the commercial label permits the
suppression of any speech that may lead to political or
social “volatility,” free speech would be endangered.
* * *
For these reasons, we hold that the disparagement
clause violates the Free Speech Clause of the First
Amendment. The judgment of the Federal Circuit is
affirmed.
It is so ordered.
JUSTICE GORSUCH took no part in the consideration or
decision of this case.
Cite as: 582 U. S. ____ (2017) 1
Opinion of KENNEDY, J.
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–1293
_________________
JOSEPH MATAL, INTERIM DIRECTOR, UNITED
STATES PATENT AND TRADEMARK OFFICE,
PETITIONER v. SIMON SHIAO TAM
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[June 19, 2017]
JUSTICE KENNEDY, with whom JUSTICE GINSBURG,
JUSTICE SOTOMAYOR, and JUSTICE KAGAN join, concurring
in part and concurring in the judgment.
The Patent and Trademark Office (PTO) has denied the
substantial benefits of federal trademark registration to
the mark THE SLANTS. The PTO did so under the man-
date of the disparagement clause in 15 U.S. C. §1052(a),
which prohibits the registration of marks that may “dis-
parage . . . or bring . . . into contemp[t] or disrepute” any
“persons, living or dead, institutions, beliefs, or national
symbols.”
As the Court is correct to hold, §1052(a) constitutes
viewpoint discrimination—a form of speech suppression so
potent that it must be subject to rigorous constitutional
scrutiny. The Government’s action and the statute on
which it is based cannot survive this scrutiny.
The Court is correct in its judgment, and I join Parts I,
II, and III–A of its opinion. This separate writing explains
in greater detail why the First Amendment’s protections
against viewpoint discrimination apply to the trademark
here. It submits further that the viewpoint discrimination
rationale renders unnecessary any extended treatment of
other questions raised by the parties.
2 MATAL v. TAM
Opinion of KENNEDY, J.
I
Those few categories of speech that the government can
regulate or punish—for instance, fraud, defamation, or
incitement—are well established within our constitutional
tradition. See United States v. Stevens, 559 U.S. 460, 468
(2010). Aside from these and a few other narrow excep-
tions, it is a fundamental principle of the First Amend-
ment that the government may not punish or suppress
speech based on disapproval of the ideas or perspectives
the speech conveys. See Rosenberger v. Rector and Visi-
tors of Univ. of Va., 515 U.S. 819, 828–829 (1995).
The First Amendment guards against laws “targeted at
specific subject matter,” a form of speech suppression
known as content based discrimination. Reed v. Town of
Gilbert, 576 U. S. ___, ___ (2015) (slip op., at 12). This
category includes a subtype of laws that go further, aimed
at the suppression of “particular views . . . on a subject.”
Rosenberger, 515 U.S., at 829. A law found to discrimi-
nate based on viewpoint is an “egregious form of content
discrimination,” which is “presumptively unconstitutional.”
Id., at 829–830.
At its most basic, the test for viewpoint discrimination is
whether—within the relevant subject category—the gov-
ernment has singled out a subset of messages for disfavor
based on the views expressed. See Cornelius v. NAACP
Legal Defense & Ed. Fund, Inc., 473 U.S. 788, 806 (1985)
(“[T]he government violates the First Amendment when it
denies access to a speaker solely to suppress the point of
view he espouses on an otherwise includible subject”). In
the instant case, the disparagement clause the Govern-
ment now seeks to implement and enforce identifies the
relevant subject as “persons, living or dead, institutions,
beliefs, or national symbols.” 15 U.S. C. §1052(a). Within
that category, an applicant may register a positive or
benign mark but not a derogatory one. The law thus
reflects the Government’s disapproval of a subset of mes-
Cite as: 582 U. S. ____ (2017) 3
Opinion of KENNEDY, J.
sages it finds offensive. This is the essence of viewpoint
discrimination.
The Government disputes this conclusion. It argues, to
begin with, that the law is viewpoint neutral because it
applies in equal measure to any trademark that demeans
or offends. This misses the point. A subject that is first
defined by content and then regulated or censored by
mandating only one sort of comment is not viewpoint
neutral. To prohibit all sides from criticizing their oppo-
nents makes a law more viewpoint based, not less so. Cf.
Rosenberger, supra, at 831–832 (“The . . . declaration that
debate is not skewed so long as multiple voices are si-
lenced is simply wrong; the debate is skewed in multiple
ways”). The logic of the Government’s rule is that a law
would be viewpoint neutral even if it provided that public
officials could be praised but not condemned. The First
Amendment’s viewpoint neutrality principle protects more
than the right to identify with a particular side. It pro-
tects the right to create and present arguments for partic-
ular positions in particular ways, as the speaker chooses.
By mandating positivity, the law here might silence dis-
sent and distort the marketplace of ideas.
The Government next suggests that the statute is view-
point neutral because the disparagement clause applies to
trademarks regardless of the applicant’s personal views or
reasons for using the mark. Instead, registration is denied
based on the expected reaction of the applicant’s audience.
In this way, the argument goes, it cannot be said that
Government is acting with hostility toward a particular
point of view. For example, the Government does not
dispute that respondent seeks to use his mark in a posi-
tive way. Indeed, respondent endeavors to use The Slants
to supplant a racial epithet, using new insights, musical
talents, and wry humor to make it a badge of pride. Re-
spondent’s application was denied not because the Gov-
ernment thought his object was to demean or offend but
4 MATAL v. TAM
Opinion of KENNEDY, J.
because the Government thought his trademark would
have that effect on at least some Asian-Americans.
The Government may not insulate a law from charges of
viewpoint discrimination by tying censorship to the reac-
tion of the speaker’s audience. The Court has suggested
that viewpoint discrimination occurs when the govern-
ment intends to suppress a speaker’s beliefs, Reed, supra,
at ___–___ (slip op., at 11–12), but viewpoint discrimina-
tion need not take that form in every instance. The dan-
ger of viewpoint discrimination is that the government is
attempting to remove certain ideas or perspectives from a
broader debate. That danger is all the greater if the ideas
or perspectives are ones a particular audience might think
offensive, at least at first hearing. An initial reaction may
prompt further reflection, leading to a more reasoned,
more tolerant position.
Indeed, a speech burden based on audience reactions is
simply government hostility and intervention in a differ-
ent guise. The speech is targeted, after all, based on the
government’s disapproval of the speaker’s choice of mes-
sage. And it is the government itself that is attempting in
this case to decide whether the relevant audience would
find the speech offensive. For reasons like these, the
Court’s cases have long prohibited the government from
justifying a First Amendment burden by pointing to the
offensiveness of the speech to be suppressed. See ante, at
23 (collecting examples).
The Government’s argument in defense of the statute
assumes that respondent’s mark is a negative comment.
In addressing that argument on its own terms, this opin-
ion is not intended to imply that the Government’s inter-
pretation is accurate. From respondent’s submissions, it
is evident he would disagree that his mark means what
the Government says it does. The trademark will have the
effect, respondent urges, of reclaiming an offensive term
for the positive purpose of celebrating all that Asian-
Cite as: 582 U. S. ____ (2017) 5
Opinion of KENNEDY, J.
Americans can and do contribute to our diverse Nation.
Brief for Respondent 1–4, 42–43. While thoughtful per-
sons can agree or disagree with this approach, the disso-
nance between the trademark’s potential to teach and the
Government’s insistence on its own, opposite, and negative
interpretation confirms the constitutional vice of the
statute.
II
The parties dispute whether trademarks are commercial
speech and whether trademark registration should be
considered a federal subsidy. The former issue may turn
on whether certain commercial concerns for the protection
of trademarks might, as a general matter, be the basis for
regulation. However that issue is resolved, the viewpoint
based discrimination at issue here necessarily invokes
heightened scrutiny.
“Commercial speech is no exception,” the Court has
explained, to the principle that the First Amendment
“requires heightened scrutiny whenever the government
creates a regulation of speech because of disagreement
with the message it conveys.” Sorrell v. IMS Health Inc.,
564 U.S. 552, 566 (2011) (internal quotation marks omit-
ted). Unlike content based discrimination, discrimination
based on viewpoint, including a regulation that targets
speech for its offensiveness, remains of serious concern in
the commercial context. See Bolger v. Youngs Drug Prod-
ucts Corp., 463 U.S. 60, 65, 71–72 (1983).
To the extent trademarks qualify as commercial speech,
they are an example of why that term or category does not
serve as a blanket exemption from the First Amendment’s
requirement of viewpoint neutrality. Justice Holmes’
reference to the “free trade in ideas” and the “power of . . .
thought to get itself accepted in the competition of the
market,” Abrams v. United States, 250 U.S. 616, 630
(1919) (dissenting opinion), was a metaphor. In the realm
6 MATAL v. TAM
Opinion of KENNEDY, J.
of trademarks, the metaphorical marketplace of ideas
becomes a tangible, powerful reality. Here that real mar-
ketplace exists as a matter of state law and our common-
law tradition, quite without regard to the Federal Gov-
ernment. See ante, at 2. These marks make up part of the
expression of everyday life, as with the names of enter-
tainment groups, broadcast networks, designer clothing,
newspapers, automobiles, candy bars, toys, and so on. See
Brief for Pro-Football, Inc., as Amicus Curiae 8 (collecting
examples). Nonprofit organizations—ranging from medical-
research charities and other humanitarian causes to
political advocacy groups—also have trademarks, which
they use to compete in a real economic sense for funding
and other resources as they seek to persuade others to join
their cause. See id., at 8–9 (collecting examples). To
permit viewpoint discrimination in this context is to per-
mit Government censorship.
This case does not present the question of how other
provisions of the Lanham Act should be analyzed under
the First Amendment. It is well settled, for instance, that
to the extent a trademark is confusing or misleading the
law can protect consumers and trademark owners. See,
e.g., FTC v. Winstead Hosiery Co., 285 U.S. 483, 493
(1922) (“The labels in question are literally false, and . . .
palpably so. All are, as the Commission found, calculated
to deceive and do in fact deceive a substantial portion of
the purchasing public”). This case also does not involve
laws related to product labeling or otherwise designed to
protect consumers. See Sorrell, supra, at 579 (“[T]he
government’s legitimate interest in protecting consumers
from commercial harms explains why commercial speech
can be subject to greater governmental regulation than
noncommercial speech” (internal quotation marks omit-
ted)). These considerations, however, do not alter the
speech principles that bar the viewpoint discrimination
embodied in the statutory provision at issue here.
Cite as: 582 U. S. ____ (2017) 7
Opinion of KENNEDY, J.
It is telling that the Court’s precedents have recognized
just one narrow situation in which viewpoint discrimina-
tion is permissible: where the government itself is speak-
ing or recruiting others to communicate a message on its
behalf. See Legal Services Corporation v. Velazquez, 531
U.S. 533, 540–542 (2001); Board of Regents of Univ. of
Wis. System v. Southworth, 529 U.S. 217, 229, 235 (2000);
Rosenberger, 515 U.S., at 833. The exception is necessary
to allow the government to stake out positions and pursue
policies. See Southworth, supra, at 235; see also ante, at
13–14. But it is also narrow, to prevent the government
from claiming that every government program is exempt
from the First Amendment. These cases have identified a
number of factors that, if present, suggest the government
is speaking on its own behalf; but none are present here.
See ante, at 14–18.
There may be situations where private speakers are
selected for a government program to assist the govern-
ment in advancing a particular message. That is not this
case either. The central purpose of trademark registration
is to facilitate source identification. To serve that broad
purpose, the Government has provided the benefits of
federal registration to millions of marks identifying every
type of product and cause. Registered trademarks do so by
means of a wide diversity of words, symbols, and mes-
sages. Whether a mark is disparaging bears no plausible
relation to that goal. While defining the purpose and
scope of a federal program for these purposes can be com-
plex, see, e.g., Agency for Int’l Development v. Alliance for
Open Society Int’l, Inc., 570 U. S. ___, ___ (2013) (slip op.,
at 8), our cases are clear that viewpoint discrimination is
not permitted where, as here, the Government “expends
funds to encourage a diversity of views from private
speakers,” Velazquez, supra, at 542 (internal quotation
marks omitted).
8 MATAL v. TAM
Opinion of KENNEDY, J.
* * *
A law that can be directed against speech found offen-
sive to some portion of the public can be turned against
minority and dissenting views to the detriment of all. The
First Amendment does not entrust that power to the
government’s benevolence. Instead, our reliance must be
on the substantial safeguards of free and open discussion
in a democratic society.
For these reasons, I join the Court’s opinion in part and
concur in the judgment.
Cite as: 582 U. S. ____ (2017) 1
Opinion of THOMAS, J.
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–1293
_________________
JOSEPH MATAL, INTERIM DIRECTOR, UNITED
STATES PATENT AND TRADEMARK OFFICE,
PETITIONER v. SIMON SHIAO TAM
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[June 19, 2017]
JUSTICE THOMAS, concurring in part and concurring in
the judgment.
I join the opinion of JUSTICE ALITO, except for Part II.
Respondent failed to present his statutory argument
either to the Patent and Trademark Office or to the Court
of Appeals, and we declined respondent’s invitation to
grant certiorari on this question. Ante, at 9. I see no
reason to address this legal question in the first instance.
See Star Athletica, L. L. C. v. Varsity Brands, Inc., 580
U. S. ___, ___ (2017) (slip op., at 6).
I also write separately because “I continue to believe
that when the government seeks to restrict truthful
speech in order to suppress the ideas it conveys, strict
scrutiny is appropriate, whether or not the speech in
question may be characterized as ‘commercial.’ ” Lorillard
Tobacco Co. v. Reilly, 533 U.S. 525, 572 (2001) (THOMAS,
J., concurring in part and concurring in judgment); see
also, e.g., 44 Liquormart, Inc. v. Rhode Island, 517 U.S.
484, 518 (1996) (same). I nonetheless join Part IV of
JUSTICE ALITO’s opinion because it correctly concludes
that the disparagement clause, 15 U.S. C. §1052(a), is
unconstitutional even under the less stringent test an-
nounced in Central Hudson Gas & Elec. Corp. v. Public
Serv. Comm’n of N. Y., 447 U.S. 557 (1980).