The case In re Tam may nullify a federal law that has been in existence for seventy years, and that has defined the government’s authority to regulate offensive trademarks.
Freedom of speech is and forever will be a contentious topic in American society. Recently, discussions of safe spaces on campuses, and to what extent media outlets may publish private information about celebrities, has dominated the headlines. Amid this cacophony of free speech debates, a band called The Slants is fighting the government to patent their band name, citing their First Amendment Right to do so.
The Slants is an Asian-American dance rock band from Portland, Oregon. On November 14, 2011, the front man of the band, Simon Tam, filed an application to patent the mark “The Slants.” The United States Patent and Trademark Office (PTO) rejected Tam’s application given that the office was authorized to do under the Lanham Act, because the term was disparaging of persons of Asian descent. The PTO elaborated on its decision by explaining that the term has a long history of being used to mock a physical feature of people of Asian descent, and was therefore rejected.
To determine if a mark is disparaging…[t]rademark examiner[s]…[consider] the likely meaning of the matter in question…
Under the Lanham Act or 15 U.S.C. § 1052(a), the PTO is barred from registering “scandalous, immoral, or disparaging marks.” This provision was included in the law because the government largely disapproves of messages that are conveyed by disparaging marks.
The Lanham Act was implemented in 1947 and since then, has been widely accepted. Other trademarks that have been rejected include “Abort the Republicans,” “Heeb,” “Mormon Whiskey,” “Khoran for wine,” “Heard that Satan is a Republican,” “Sex Rod,” “Democrats shouldn’t breed,” “Republicans shouldn’t breed,” and the “Washington Redskins.”
To determine if a mark is disparaging under § 2(a), a trademark examiner 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. In addition to these things, the trademark examiner looks to see if the meaning of the mark is found to refer to identifiable persons, institutions, beliefs or national symbols, and whether that meaning may be disparaging to a substantial composite of the referenced group.
…the Federal Circuit Court…agreed with Tam and concluded that the provision of the Lanham Act was unconstitutional…
Tam’s application was rejected both by the initial PTO examiner as well as the reviewing board. After being rejected, Tam filed an appeal in the United States of Court of Appeals for the Federal Circuit. Tam’s brief contended that the disparaging provision within the federal law is unconstitutional because the regulation is invalid “viewpoint discrimination” as well as “content-based discrimination” and is therefore unconstitutional under the First Amendment. In a 9-3 decision, the Federal Circuit Court sitting en-banc, agreed with Tam and concluded that the provision of the Lanham Act was unconstitutional and interpreted § 2(a) as both invalid viewpoint discrimination and content-based discrimination.
The government argued that § 2(a) is immune from First Amendment scrutiny because the law does not prohibit speech, but leaves Mr. Tam free to name his band as he chooses, as well as use whatever name for financial gain. The regulation does not prohibit expressive speech, but acts as a filter on commercial speech. Commercial speech is not entitled to the same degree of protection as expressive speech under the First Amendment. Thus, the appropriate review is intermediate scrutiny. Under intermediate scrutiny the government only needs to justify the regulation with a legitimate government interest. The PTO proffered that eliminating disparaging and offensive marks from the marketplace sufficed as a legitimate government interest under intermediate scrutiny.
Viewpoint discrimination is the term designated by the United States Supreme Court whereby the government should be prevented from intervening into an ongoing political controversy by silencing one side of a dispute. Applying the First Amendment, the concept of viewpoint discrimination encompasses the idea that the government cannot penalize an expression simply because some might disagree with the intent or point-of-view behind the expression.
Under strict scrutiny review, the Court determined that the regulation in the Lanham Act does constitute viewpoint discrimination and is therefore unconstitutional. The majority reasoned that § 2(a) permits the government to deny trademark protection for a mark on the basis of the message the mark conveys. For example, the Court found that the only reason the PTO has protected other marks like “Celebrasians” and “Asian Efficiency” is due to the point-of-view and positive message behind the expression.
The Court acknowledged that while trademarks usually deal with commercial speech rather than expressive speech, rejecting a trademark has implications that chill free expression.
After concluding that § 2(a) was unconstitutional viewpoint discrimination, the majority argued that in the alternative, the provision was content-based discrimination. Content-based discrimination occurs when laws that target speech based on their communicative content, lack a compelling government interest. These types of regulations are presumptively unconstitutional and must be narrowly tailored to serve the compelling state interest asserted by the government.
The Court acknowledged that while trademarks usually deal with commercial speech rather than expressive speech, rejecting a trademark has implications that chill free expression. The court further reasoned that when the PTO rejects a mark, they are suppressing the expressive aspects of the speech and not the commerciality behind the expression. Concluding that the regulation targeted content, the Court found that the government had not asserted a compelling government interest other than their right to regulate offensive marks in the marketplace, and therefore found the regulation in the Lanham Act unconstitutional as content discrimination.
Three judges dissented from the majority, citing multiple issues with the majority’s reasoning. The dissent initially cited stare decisis and took issue with the fact that the majority rejected a law that has been deemed to be Constitutional over the last seventy years. In addition, the dissent found that the speech at issue was commercial speech and did not merit the protections that expressive speech is provided under the First Amendment. Further, the dissent found that trademark protection does not regulate expressive speech since the band can openly publish their band name and speak freely. Given that the speech is purely commercial, the dissent felt that courts should review patent names under intermediate scrutiny rather than strict scrutiny.
In 2014, the professional football team, the Washington Redskins, lost their trademark on their name when the PTO withdrew its protection from the professional football team.
The case has implications that could affect other similar cases including the legal dispute involving the trademark on the Washington Redskins. In 2014, the professional football team, the Washington Redskins, lost their trademark on their name when the PTO withdrew its protection from the professional football team. The team’s lawyers argued that the term “Redskins” is a term of admiration and respect towards Native Americans. The PTO and appellate courts were not persuaded and upheld the PTO’s withdrawal of the mark under § 2(a) as disparaging to a composite of the population.
Tam distinguishes the term “slants” from “Redskins” by claiming that slants is not a disparaging term, but a physical trait that the Asian community should not feel ashamed of.
Many headlines have falsely concluded that the Redskins’ lawsuit and Tam’s lawsuit have formed an alliance against the PTO. However, the band has made it clear that their lawsuit is different and that they respect the agency’s decision to strip the Washington Redskins’ patent. On the band’s website, the band claims that they are involved with helping marginalized communities by raising awareness about social justice issues. Tam distinguishes the term “slants” from “Redskins” by claiming that slants is not a disparaging term, but a physical trait that the Asian community should not feel ashamed of. Tam states that The Slants are proud of their physical descriptions and that the Asian community should not feel ashamed about their physical characteristics. The band’s lyrics, performances, and title are an outlet that enables it to engage in political discussions about race and society that are protected by the First Amendment.
The band can argue that their plight is different from the Washington Redskins’ however, the effect of finding § 2(a) unconstitutional will undoubtedly effect other case outcomes in favor of permitting any trademarks, so long as the mark complies with the other provisions of the Lanham Act. The Washington Redskins applied for certiorari but this motion was ultimately denied. Although it has been a difficult journey so far for Mr. Tam, should the Supreme Court affirm the Federal Circuit’s ruling in In re Tam, parties like the Washington Redskins, and others, whose trademark has been rejected, will simply reapply for registration. This could change the course of patent and trademark law as we know it.