By Kiran Jassal
The Supreme Court of the United States recently heard oral arguments for Lee v. Tam to decide whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment. The disparagement provision resides in Section 2(a) of the Lanham Act and states that a trademark which “[c]onsists of…matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” may not be registered.
In 2011, Simon Shiao Tam filed a trademark application for his band name, “The Slants.”
The United States Patent and Trademark Office (USPTO) subsequently denied his application because the Examining Attorney found the mark disparaging to people of Asian descent under Section 2(a). Mr. Tam maintains that the mark is not intended to disparage, rather his band wants to reclaim the racial slur and use it as a symbol of Asian heritage pride. Accordingly, he appealed the USPTO’s decision to the Trademark Trial and Appeal Board (TTAB), but the Board affirmed the Examiner’s decision. The case was then heard en banc by the United States Court of Appeals for the Federal Circuit. A majority of that court held that the disparagement provision of the Lanham Act is unconstitutional and that Mr. Tam deserved trademark protection. Both parties petitioned the Supreme Court for writ of certiorari, which it granted in September 2016.
The following are issues that the Supreme Court will consider in Lee v. Tam:
- Whether the disparagement clause bars the registration of Mr. Tam’s trademark?
- Whether the disparagement clause is contrary to the First Amendment?
- Whether the disparagement clause is unconstitutionally vague under the First and Fifth Amendments?
The USPTO’s brief to the Supreme Court outlines several main arguments for why the Court should reverse the Federal Circuit’s decision, as well as why Mr. Tam’s mark is undeserving of federal trademark registration. In short, the USPTO asserts that there is a fundamental constitutional distinction between laws that regulate speech and laws that define eligibility for a government program, such as the federal Principal Register. Citing Supreme Court decisions, the USPTO highlights that the Court has recognized the government’s broad latitude in funding, or declining to fund, protected expression. The provision does not prevent Mr. Tam from engaging in speech “outside the scope of the federally funded program.”
In contrast, Mr. Tam’s brief argues in favor of affirming the Federal Circuit’s decision. First, Mr. Tam argues that the disparagement clause is contrary to the First Amendment, and imposes significant burdens on speech by allowing registration of marks that express a neutral or positive view of a person, while barring the registration of marks that express a negative view. Second, Mr. Tam asserts that the disparagement clause does not bar registration of “The Slants” because the term is being appropriated and reclaimed as a badge of pride. Lastly, Mr. Tam advocates that the disparagement clause is unconstitutionally vague and dissuades trademark registrants from terms the USPTO might conceivably find disparaging, particularly as it can be extraordinarily costly and disruptive to change the name of a good/service that already exists in the marketplace. Prominent organizations such as the ACLU have filed amicus briefs in support of Tam, arguing that the disparagement clause of the Lanham Act allows the government to engage in unacceptable censorship by regulating the private speech of trademarks based on viewpoint.
This decision will determine issues regarding government power to regulate speech, the fate of hundreds of disparaging marks that applicants wish to register, as well as determine the future of past marks that have already been cancelled due to their immoral, scandalous, or deceptive manner. One prominent example is the Washington’s national football team, the Redskins, whose trademark was cancelled because the Board found that their name disparaged Native Americans.