In late September, the U.S. Supreme Court granted writs of certiorari for nine cases that it will hear and decide in the coming months. One of those cases, Lee v. Tam, will explore whether a law which allows the U.S. Patent and Trademark Office to deny trademark rights on the basis that the trademark is disparaging to a group of people.
This case arises out of a USPTO action made in September 2013 to deny a trademark to petitioner Simon Shiao Tam, founder and member of the Asian-American dance-rock band The Slants, under provisions of the Lanham Act. The USPTO, through its Trademark Trial and Appeal Board (TTAB), denied a standard character mark for “The Slants” to be used with live music performance entertainment on the basis that the term is a highly disparaging reference to people of Asian-American descent. The USPTO office action cites the following quote from the Wikipedia page for The Slants: “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them. We’re very proud of being Asian – we’re not going to hide that fact. The reaction from the Asian-American community has been positive.”
The case will examine whether Section 2(a) of the Lanham Act is constitutional in light of the free speech clause of the First Amendment. That law states that no trademark shall be denied registration on the principal register on account of its nature unless it comprises immoral, deceptive or scandalous matter, or matter which may disparage persons living or dead, institutions, beliefs or national symbols. This section of the Lanham Act also prevents trademarks on wines or spirits which indicate a geographical region other than the origin of those goods.
The writ of certiorari was issued for this case after the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) issued a decision last December in In re Tam, an appeal filed by Simon Tam to overturn the TTAB decision. In that case, the Federal Circuit voted 9-to-3 to vacate the TTAB decision to deny the trademark to Tam because § 2(a) of the Lanham Act was unconstitutional “under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.” The majority opinion issued by Federal Circuit noted that the First Amendment protects even hurtful speech and that the federal government has offered no legitimate interests justifying § 2(a) of the Lanham Act.
The USPTO filed a petition for a writ of certiorari from the Supreme Court this March. In that petition, the TTAB decision was defended because it did not suppress speech but rather excluded Tam from enjoying the benefits of registering a trademark with the federal government. The petition noted that the USPTO’s decision to deny trademark status “simply prevents respondent from calling upon the resources of the federal government to assist him in enforcing his rights in THE SLANTS.”
In June, a brief was filed on behalf of respondent Tam which encouraged the Supreme Court to take up the case. Even though Fed. Cir. had found correctly that the disparagement provisions of the Lanham Act were unconstitutional, the petition argued that “certiorari should nevertheless be granted” because the issue is important and the Supreme Court would likely in the near future, “in another case if not this one.” Specifically, the petition cites a writ of certiorari filed by the NFL’s Washington Redskins which raises essentially the same argument against the Lanham Act. “If the court wishes to hear the two cases together, we urge the Court to do so now rather than waiting until the Fourth Circuit has decided the Redskins’ case,” the petition reads. The same day that Tam’s brief was filed, an amicus curiae brief was filed by Pro-Football Inc., owner and operator of the Washington Redskins. The brief indicated the party’s substantial interest in the legal question presented by the case. The USPTO invalidated trademarks held by the Redskins in 2014 on the basis that they were disparaging to native Americans. Pro-Football contends that the decision to do so decades after applying for the marks, some of which were filed back in 1967, violates procedural due process.
Interestingly, although Tam’s brief indicates that the Supreme Court should decide both cases together, Tam has publicly attempted to distance The Slants trademark case from the case brought by the Redskins. In a blog post originally published in 2014 on the official website for The Slants, Tam noted several distances between the cases, such as the fact that “slants” has many meanings while “redskins” has always been used as a racial slur. Tam adds that the owners of the “redskins” mark are not members of the referenced group, whereas members of The Slants are Asian-American.