Is the disparagement clause of the Lanham Act, which allows the USPTO to refuse federal registration to marks which “may be disparaging” to persons of a certain race, ethnicity, gender, religion, or sexual orientation, invalid under the Free Speech Clause of the First Amendment
This case will address the constitutionality of the disparagement clause, or §2(a) of the Lanham Act. Simon Tam, spokesperson for THE SLANTS, an Asian-American dance-rock band, argues that this provision, which allows the USPTO to deny federal registration to marks that “may be disparaging,” poses impermissible censorship of political speech in instances where registrants seek to reappropriate a previously disparaging term. Michelle K. Lee, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, maintains that this provision merely denies federal registration for a government program but does not restrict an individual’s political or commercial speech. The resolution of this case will determine whether the owners of potentially disparaging marks, such as the Washington Redskins, have the right to register their marks, bring suit for infringement, and use government resources for policing new trademark applicants and potential infringement.
Questions as Framed for the Court by the Parties
Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of * * * matter which may disparage * * * persons, living or dead, institutions, beliefs, or nation-al symbols, or bring them into contempt, or disrepute.”
The question presented is as follows:
Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.
On November 14, 2011, Simon Tam filed an application to register the name of an Asian-American dance-rock band, THE SLANTS, with the United States Patent and Trademark Office (“USPTO”). Tam and his fellow band members have used this mark in commerce since 2006, when they first formed the band. THE SLANTS seeks to reappropriate and take ownership of Asian-American stereotypes to foster a sense of pride in the Asian-American community. The band’s lyrics draw from memories of childhood slurs and mocking nursery rhymes for inspiration. For example, the band’s album Slanted Eyes, Slanted Hearts includes a song called “Sakura, Sakura” where the band turned “hateful rhymes about Asians . . . into a song about unity and being proud of . . . heritage.” ; Tam argued that these facts place his band at the heart of First Amendment speech, as their lyrics, performances, and name weigh in on cultural and political discussions about race and society.
The trademark examiner found, however, that a substantial composite of people of Asian-American descent might be offended by this term and subsequently denied registration to Tam’s mark under §2(a), the disparagement clause of the Lanham Act. The Trademark Trial and Appeal Board reviewed the examiner’s decision, considered both the dictionary meaning of the word and the imagery and contextual symbols of the band’s performances, and affirmed the examiner’s refusal. Tam appealed this decision on constitutional grounds.
The appeal first went before a Federal Circuit panel that considered whether “the slants” could fall under a dictionary definition that does not refer to people of Asian-American descent. The panel found that, from Tam’s own remarks, the band’s name was widely understood as referring to people of Asian-American descent. The panel looked at an article in which Tam explained that he came up with the band’s name because “one of the first things people say is that we have slanted eyes,” and the band’s Wikipedia page, which stated that the name is “derived from an ethnic slur for Asians.”
The panel then looked at the “derogatory,” “demeaning,” and “crippl[ing]” nature of the term based on news articles and blog posts. The panel also noted a brochure published by the Japanese American Citizens league, which stated that the term was “a derogatory term” used to “cripple the spirit.” Satisfied that the mark was disparaging under the dictionary and public poll evidentiary standards used to determine the application of §2(a), the panel held that binding precedent in In re McGinley, 660 F.2d 481 (1981), which held that trademark registration did not implicate the First Amendment because the owners of unregistered marks were not barred from using these marks, foreclosed Tam’s constitutional claim.
Upon an en banc rehearing, the Federal Circuit Court of Appeals determined that the disparagement clause was a viewpoint-based restriction on free speech rights and applied strict scrutiny to find that it was facially unconstitutional. In his dissent, Judge Reyna argues that trademarks should receive intermediate scrutiny because they are commercial speech and a government interest in maintaining an orderly flow of commerce—that might otherwise be disrupted by racist or otherwise offensive marks—passes intermediate scrutiny.
Tam’s case raises many of the same issues as those raised by the Washington Redskins in their challenge of the USPTO’s denial of their renewal application for their mark, which is being decided by the Fourth Circuit. The Fourth Circuit has temporarily suspended the Washington Redskins’ case until the Supreme Court has ruled in this case.
WHETHER THE DISPARAGEMENT CLAUSE IS A LAW THAT DEFINES ELIGIBILITY FOR A GOVERNMENT PROGRAM OR RESTRICTS SPEECH
Petitioner Michelle K. Lee, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, argues that the disparagement clause is not a law that restricts speech but one that defines eligibility for a government program: federal trademark registration. Lee asserts that because trademarks serve a commercial purpose by identifying the source of goods and services, trademarks are commercial speech and entitled to less protection under the First Amendment. Lee analogizes restrictions on trademark registration eligibility to government participation in license plate production and union dues collection. Lee notes that the Court has found that license plate production and union dues collection are private speech that take place on a government platform and bear the stamp of approval by the government; therefore, the government has a right to decline to incorporate certain messages into these communications. Lee further compares trademark registration with license plate production, noting that user fees fund both programs and that users are still subject to restrictions on eligibility for government benefits. Lee contends that trademark registration criteria present a more compelling case for the disparagement clause’s constitutional validity than license plate production because trademark registration is are not only expressive but also functional; registration “relate[s] to the mark owner’s ability to prevent others from using the mark in commerce, rather than to the mark owner’s communication of his own message.”
Respondent Simon Shiao Tam counters that the disparagement clause is a law that restricts speech. Tam asserts that Lee’s characterization of the disparagement clause as government subsidy, government speech, or purely commercial speech is misguided. Tam argues that trademark registration is not a subsidy because there is no exchange of funds. Tam also refutes that trademarks can be regulated as purely commercial speech because trademarks are both expressive and commercial, and a mark’s expressive elements cannot be separated from its commercial elements. Instead, Tam asserts that trademark registration is a recording system similar to copyright and patent law. Tam warns that classifying trademark registration as a government program would give the government expansive power to leverage government aid as a means of restricting speech. Tam also claims that Lee’s comparison of license plates and union dues to trademark registration is not compelling because unlike these types of government speech, trademarks do not communicate messages from the government, the government does not necessarily agree with the message of the mark, the content of trademarks are not within the control of the government and the public does not understand trademarks to be government speech.
WHETHER THE COURT SHOULD APPLY STRICT SCRUTINY OR A LESSER LEVEL OF SCRUTINY
Because Lee asserts that federal trademark registration is a government program, Lee argues that Congress is entitled to broader authority “to encourage actions deemed to be in the public interest” by defining the parameters of the program. According to Lee, this broad Congressional authority applies to all forms of government programs and is not limited to instances of financial subsidies. Because the disparagement clause is within Congress’s power to further its policy objectives, Lee maintains that the Court should not apply strict scrutiny but should use a lesser level scrutiny instead. Lee states that the disparagement clause’s restriction of benefits passes this lesser level of scrutiny because the government has two legitimate interests: (1) limiting what the federal government associates itself with, and (2) encouraging the use of non-disparaging trademarks in commerce. Lee argues that once private speech is given federal trademark protection, it becomes more than mere private speech and is shared between the owner and the government.
Tam, on the other hand, argues that federal trademark registration is not a government program ad so should be subject to strict scrutiny. According to Tam, the government fails to meet either prong of the test for strict scrutiny. First, the government cannot demonstrate a compelling interest because the Court previously rejected shielding the public from offensive language and protecting the public from disgust as a compelling interest. Second, Tam asserts that the disparagement clause is not narrowly tailored because it only indirectly serves the government’s stated purpose.
WHETHER DENYING THE BENEFITS OF FEDERAL TRADEMARK REGISTRATION RESTRICTS SPEECH
Lee argues that the disparagement clause does not restrict speech but only denies the benefits of federal trademark registration to certain marks. Lee asserts that because mark owners, like Tam, are still able to use the terms they sought to trademark, the disparagement clause does not restrict speech. Lee underscores the remedies available to unregistered marks under common law and federal trademark law. Lee contends that denying the benefits of trademark legislations to disparaging marks does not create a burden on speech because the First Amendment does not create an affirmative right to government resources. Lee further argues that any changes in speech in response to the disparagement clause does not constitute an impermissible chilling effect, but are instead the permissible effects of Congressional policy. Lee maintains that every government program, including federal trademark registration, necessarily affects private behavior and that to find such changes unconstitutional would invalidate Congress’s power to legislate. Lee supports the validity of these effects on speech by comparing the disparagement clause to other constitutional laws that constrain the content of private speech, such as libel, threats, or fighting words, and to other provisions of the Lanham Act that forbid immoral, deceptive, or scandalous speech.
In contrast, Tam argues that even if the disparagement clause is part of a government program, it impermissibly restricts speech. Tam admits that the mark owners are able to spread their message without formal protection, but asserts that the denial of benefits, like constructive notice of ownership, prima facie evidence of ownership, and a certificate of ownership, amounts to a burden on private speech, especially in the context of music. Tam contends that these restrictions will have a chilling effect on speech because owners will avoid using potentially disparaging speech to avoid the burden of being denied trademark registration. Tam contends that disparaging content and dissenting opinions are a fundamental part of the First Amendment’s protections and that this speech cannot be afforded less protection because it shares common features with speech that is permissibly restricted. Tam questions the utility of comparing the disparagement clause to other laws like libel, threats or fighting words by contrasting the narrow and defined parameters of these laws with the subjectivity and vagueness inherent in the disparagement clause.
WHETHER THE DISPARAGEMENT CLAUSE IS VIEWPOINT DISCRIMINATION AND/OR IMPERMISSIBLY VAGUE
Lee rebuts Tam’s contention that the disparagement clause is impermissible viewpoint discrimination. Lee argues that the disparagement clause denies trademarks with certain disparaging terms regardless of the owner’s motive. Lee maintains that the disparagement clause examines the context of the mark and how the public will interpret the mark but does not discriminate based on the owner’s message or viewpoint.
Tam argues that even if the disparagement clause were accepted as valid, it does not apply to Tam’s trademark because such application amounts to viewpoint discrimination and an impermissible restriction on speech by divorcing the mark from its context. Tam asserts that the clause is viewpoint discrimination because it does not further the purpose of the Lanham Act: to adequately identify the source of a good or service. Instead, Tam argues, the clause prevents its purpose by excluding trademarks, thus preventing adequate identification, due to potential disparaging viewpoints or content. Tam further disputes the constitutionality of the disparagement clause by arguing that First Amendment analysis should be conducted from the speaker’s viewpoint, not the public’s.
Lee also contests Tam’s assertion that the disparagement clause is inconsistently enforced as a result of impermissible vagueness. Lee argues that any such inconsistency does not justify a finding of constitutional invalidity and that there are available mechanisms under federal trademark law to address any such mistakes. Lee contends that the disparagement clause is not subject to the traditional vagueness standard because it only denies the benefits of trademark registration and does not have a significant chilling effect. Lee also asserts that because “disparaging” has a settled legal meaning, the public is afforded adequate notice of which marks qualify for trademark registration.
Tam counters that this restriction of speech is unconstitutionally vague and therefore does not provide mark owners with notice, leading to arbitrary enforcement. Tam supports this argument by highlighting that the disparagement clause encourages a subjective approach by requiring an examination of public perception. Tam additionally notes that the standard for how disparaging a mark must be to be ineligible for trademark registration is imprecise and another possible source of impermissible vagueness. Lastly, Tam lists past cases of inconsistent determinations of trademark registration eligibility for the same terms as evidence of the consequences of these vague standards.
WHETHER TRADEMARKS SHOULD BE TREATED AS EXPRESSIVE OR COMMERCIAL SPEECH
The American Civil Liberties Union et al. (“ACLU”), supporting Tam, argue 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.. The ACLU analogizes trademark rights to those conferred by copyright, noting that both involve private speech, and advocates for uniformity between these two standards to effectuate an internally consistent legal regime in intellectual property. Additionally, San Francisco Dykes on Bikes Women’s Motorcycle Contingent, Inc. (“Dykes on Bikes”), a lesbian motorcycle club committed to fighting the notion that “dyke” is a disparaging term, argues that it “adopted its trademarked name as a form of political speech” and that denying registration to groups seeking to reappropriate disparaging terms poses a clearly impermissible restriction on political speech. Similarly, Pro-Football, Inc. argues that trademarks cannot be limited to commercial speech; rather, trademarks are “expressive in their own right” as “countless non-profit organizations use registered trademarks to engage in purely political, religious, or similar speech not for profit.”
On the other hand, a group law professors, in support of Lee, argue that federal trademark registration should not be treated as “a punishment for speech” but “a government program awarding rights to control commercial speech to one private party.” The law professors note that any expressive functions can be separated from a mark’s commercial functions, and thus any attempt to compare trademark to copyright is flawed. Similarly, Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan, and Courtney Tsotigh, Native American individuals who advocated the enforcement of the disparagement provision against the trademark held by the Washington Redskins, focus on tademarks’ commercial functions to argue that trademarks are fundamentally exclusionary property rights regulated under the Commerce Clause and do not implicate the free speech rights of anyone seeking to register a disparaging mark. Blackhorse points out that trademark rights enable an owner to seek injunctions to restrict others’ speech but do not amplify the owner’s ability to exercise his or her own free speech rights; thus, preventing a trademark’s registration does not implicate the First Amendment, and trademark rights should actually be granted sparingly to place minimal restrictions on speech. Blackhorse further suggests that disallowing the registration of disparaging marks does not destroy an owner’s property rights but merely provides disincentives for owners seeking to profit on disparaging trademarks, which is a legitimate government interest.
THE ROLE OF THE GOVERNMENT
The American Center for Law and Justice (“ACLJ”), in support of Tam, cautions that defining federal trademark registration as government speech would give the USPTO a discretionary power to refuse to register any trademark, not just those which it deems to be disparaging. The Alliance Defending Freedom, also supporting Tam, suggests that each trademark that comes before the government for registration would be subject to whether any individual government official finds the view of that trademark to be disparaging. Furthermore, the Alliance Defending Freedom insists that the government will approve only trademarks that are complimentary, rather than disparaging, to certain groups, a distinction which the Alliance Defending Freedom asserts is unconstitutional.
Blackhorse, however, argues that without the disparagement clause, the government would be obligated to register offensive marks and ugly racial caricatures, thereby giving government endorsement to racism and bigotry. Lee further points out that allowing trademark registration of such disparaging marks would obligate the government to dedicate economic resources, including taxpayer dollars, to enforce the exclusive rights of individuals to use disparaging terms.
WHETHER THE STANDARD FOR DISPARAGEMENT CLAUSE APPLICATION SHOULD BE CLARIFIED
Dykes on Bikes argues that the current disparagement clause standard is applied arbitrarily and inconsistently. Dykes on Bikes supports this claim through anecdotal evidence of their own four-year registration “odyssey,” during which their mark was found to be “vulgar” rather than “disparaging” according to one list of offensive terms considered by a court upon appeal and eventually granted registration. Dykes on Bikes argues that a standard which depends on the identity, intention, or tone of the speaker; the dictionary used by the court; and the personal opinions of people polled will always be arbitrarily applied and will prevent citizens from enjoying freedoms guaranteed by the Constitution. Tam suggests that, because a fair and objective standard cannot be established for this subjective, case-by-case determination, the current standard ought to be abolished completely.
Lee argues that the current, arbitrary standard is appropriate in this particular situation because parties seeking trademark registration do not stand to lose anything as a result of an unclear standard. Blackhorse admits that the Constitution demands clarity in standards surrounding prohibitions or deprivations in order to give affected parties better notice but maintains that this strict notice standard is not necessary when the government is granting a privilege.
- Steve Bachmann, ABA files amicus brief in Lee v. Tam to correct errors in trademark law made by Federal Circuit, IP Watch Dog (Nov. 27, 2016).
- Dennis Crouch, Lee v. Tam: Supreme Court Takes on the Slants, PatentlyO (Sept. 26, 2016).
- Jonathan Zabin, IN RE SIMON SHIAO TAM, Loeb & Loeb, (2016).