On Wednesday, January 18, 2017, the U.S. Supreme Court heard oral argument in Lee v. Tam, a case reviewing the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam holding that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), was facially invalid under the First Amendment of the United States Constitution. The issue before the Supreme Court is whether the disparagement provision, which prohibits the government from registering trademarks that contain “matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the First Amendment.

In 2006, Simon Shiao Tam, an Asian-American, formed The Slants, an Asian-American dance-rock band. Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. In 2011, Mr. Tam filed an application (App. No. 85/472,044) seeking to register the mark THE SLANTS. Relying on the disparagement provision, the U.S. Patent and Trademark Office (PTO) rejected Mr. Tam’s application on the grounds that the band’s name was disparaging to Asian-Americans. The PTO found that even though Mr. Tam may have chosen the mark to “reappropriate the disparaging term,” “a substantial composite of persons of Asian descent would find the term offensive.”

The Trademark Trial and Appeal Board (TTAB) affirmed the PTO’s refusal to register the mark. According to the TTAB, people—in particular, Asian-Americans—object to the term because it is “ethnic slur.”

Mr. Tam appealed, arguing that the TTAB erred in finding the mark disparaging and that Section 2(a) is unconstitutional. A Federal Circuit panel affirmed the TTAB’s determination that the mark is disparaging. The en banc Federal Circuit, however, reversed. The Federal Circuit highlighted that the PTO’s “record of trademark registrations and denials often appears arbitrary and is rife with inconsistency.” But in the end, although the Federal Circuit agreed with the panel that the mark was disparaging—and “may lead to the wider registration of marks that offend vulnerable communities”—it concluded that the Lanham Act’s blanket ban on the registration of disparaging marks violates the First Amendment.

The government sought review from the Supreme Court, arguing, among other things, that the Lanham Act’s ban on registration of disparaging marks passes constitutional muster. In the government’s view, under Section 2(a), the government is not restricting speech; instead, it is not providing government funds for some speech. Specifically, the government argues that the blanket ban did not limit Mr. Tam’s freedom of speech. Although Mr. Tam may receive benefits from registration of the mark (i.e., preventing people from using his mark), the government argues that the denial of registration did not burden his speech. For example, Mr. Tam could keep his band’s name, choose what songs The Slants play, or advertise his band as The Slants.

Mr. Tam responds that the government’s reliance on a recent Supreme Court decision holding that Texas may bar the use of Confederate flag images on license plates was misplaced. In Walker v. Texas Division, Sons of Confederate Veterans, 135 S. Ct. 2239 (2015), the Court held that a speaker is free to put a Confederate flag sticker on the bumper of his car. But that speaker cannot have that symbol on a license plate. Mr. Tam argues that unlike license plates, buildings, and monuments, trademarks are not government messages. So the public would not attribute the mark to the government. Mr. Tam adds that the disparagement clause is unconstitutionally vague, which leads to “arbitrary registration decisions.”

During oral argument, Justice Sonia Sotomayor distinguished Mr. Tam’s situation from typical First Amendment contexts. Justice Sotomayor agreed with the government that Mr. Tam’s speech “is not being burdened in the traditional way”; he simply cannot stop someone else from using the same trademark. Justice Sotomayor added that, even then, Mr. Tam could sue under the Lanham Act’s entitlement for the confusion of the public in the use of any kind of registered or unregistered mark. Turning to the vagueness issue, Justice Ruth Bader Ginsburg flagged the PTO’s arbitrary decisions. Justice Ginsburg explained that the word “Hebe,” a slur for people of Jewish ancestry, “was okay in one application but it was not okay in another.

Due to its potential effect, a different band is keeping a close eye on this case, the National Football League’s Washington Redskins. In 2014, the PTO relied on the disparagement provision to cancel the Redskin’s trademark. A federal district court affirmed. Currently, the team’s case is on hold in the U.S. Court of Appeals for the Fourth Circuit. (The Supreme Court denied the team’s request to consider the case at the same time as Mr. Tam.)

Continue to stay tuned for further Lee v. Tam updates. For more on the interplay between First Amendment and intellectual property rights, read Brian Esler’s Free Speech and Functionality.

If you have any questions, please feel free to reach out to our trademark team.