By Adam Roberts

Simon Shao Tam named his band ‘The Slants,’ to make a statement.  He wanted to address cultural issues and discussions regarding race in society.  This type of free speech is generally considered foundational to the protections of the First Amendment.  But, Tam was denied this right.

In In Re Tam, the U.S. Patent and Trademark Office (USPTO) denied Tam’s registration for ‘The Slants,’ finding that a “substantial composite of persons of Asian descent would find the term offensive.”  Tam appealed his case to the Federal Circuit Court of Appeals who overturned the decision.  In her opinion, Judge Kimberly Moore expressed that the statute on which the Government relied – Section 2(a) of the Lanham Act – was unconstitutional under the First Amendment.  The court held that discrimination against content-based private speech is subject to strict scrutiny, which means the Government must present a compelling interest to restrict this kind of speech.  The Government’s interest in excluding speech they determined offensive was considered illegitimate to the court, and a judgment was entered in favor of Tam.

Now the U.S. Supreme Court has agreed to weigh in on the issue.   On September 29, 2016, the Supreme Court granted review of Tam’s case to consider the constitutionality of Section 2(a) of the Lanham Act.  Its upcoming opinion could have wide-reaching effects, particularly on the controversial Pro-Football, Inc. v. Blackhorse, No. 15-1874 decision, a case where a U.S. District Court upheld the cancellation of the Washington Redskin’s trademark registrations, because they were considered offensive to the Native American community.

The primary purpose of the Lanham Act is to protect the public from market confusion or deception.  However, Section 2(a) does not appear to further that purpose.  Instead, its centered around principles of morality.  Section 2(a) is often deemed the disparagement provision.  It states that “[n]o trademark . . . shall be refused registration . . . on account of its nature unless it– . . . [c]onsists of . . . . immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols . . . .”  The purpose of Section 2(a) is to prohibit content whose nature may disparage or offend people, or touch on scandalous or immoral topics.

As the court argued in Tam, Section 2(a)’s prohibition on disparaging marks does not serve the overall purpose of the Lanham Act; rather it undermines it.  Although content-based discrimination may protect the public from potentially offensive words or images, it does not protect consumers from confusion in the marketplace.  Instead, it gives a subjective reason for termination of well-established trademarks that consumers may have come to trust – the Washington Redskins being a prime example.

In Pro-Football, the U.S. District Court for the Eastern District of Virginia reached an opposite decision to Tam.  In that case, several plaintiffs sought cancellation of the National Football League (NFL) Washington Redskins’ multiple trademarks, arguing that the trademarked content was an offensive cultural epithet on Native Americans.  The District Court agreed and upheld the constitutionality of Section 2(a).  The court arrived at the conclusion that Section 2(a) was merely a restriction on Government speech.  Unlike private speech, the Government is entitled to place limitations and restrictions on their own forms of speech without implicating the First Amendment.

The Supreme Court’s eventual review of Tam will have significant consequences, no matter the outcome.  If the Court deems Section 2(a) unconstitutional, there is well-founded concern about the extent to which private parties may register a trademark, no matter how offensive the terms or images may be to society.  However, if the Court upholds the statute’s constitutionality, the Government will have the authority to place content and view-based restrictions on free speech that prevent people like Simon Tam from bringing important cultural or political issues to the forefront of public conversation and debate.

Whatever its decision, the Supreme Court will ideally bring clarity to the issue.  Does the Government’s power to discriminate disparaging content catalogued with the USPTO have limits?  Does this Governmental authority implicate our First Amendment rights?  The answer to these questions will undoubtedly resolve the contrasting opinions in Lee v. Tam and the pending Washington Redskins litigation, while also shaping constitutional implications on Intellectual Property law.

Image Source: Flickr