In re Tam: Simon Tam and “The Slants”

In re Tam

• Simon Tam files for “THE SLANTS” for “entertainment in the nature of live performances by a musical band”

• TM Office rejects the mark under §2(a): Disparaging to “people of Asian descent.”

• Upheld by TTAB, and CAFC 3-judge panel• CAFC Rehears the case en banc sua sponte• Held: disparagement provision of §2(a) is

unconstitutional because it violates the First Amendment right of free speech.

In re Tam: Why Take the Case Again?

• CAFC says earlier rulings relied on In re McGinley

• McGinley devoted seven lines to First Amendment analysis

• Similar cursory treatment in 5th Circuit and DC in Redskins case

In re Tam: §2(a) -- 15 USC §1052

TRADEMARKS REGISTRABLE ON THE PRINCIPAL REGISTER; CONCURRENT REGISTRATION

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or 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. . .

In re Tam: Summarizing the Court’s Logic

• Denial of rights is based on the content of the message– Not Content or Viewpoint Neutral– Regulates expression, not commercial

speech• “Significantly Chills” protected speech• TM Registration is not government speech• TM Registration is not a government subsidy

In re Tam: Neutrality

• Content/Viewpoint-based laws targeting speech based on content are presumed to be unconstitutional

• Strict scrutiny applies: Gov. must prove disparagement provision is narrowly tailored serving a compelling state interest – Very high bar.

• Not viewpoint neutral: TM Office restricting expression of viewpoints

• Not just limiting use of certain words.

In re Tam: Commercial Speech

• “every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a message that is disparaging to certain groups.”

• Source identification is not what is being considered in § 2(a).

• Cited Examples: Of Disparaging MarksTHE CHRISTIAN PROSTITUTEMORMON WHISKEYABORT THE REPUBLICANSDEMOCRATS SHOULDN’T BREEDURBAN INJUN

SQUAW VALLEY

AMISH HOMOSTOP THE ISLAMISATION OF

AMERICAREDSKINS

In re Tam: Chilling Effect on Free Speech

• Gov argues §2(a) does not prohibit any speech.– No conduct is proscribed, and no tangible

form of expression is suppressed.– No First Amendment issue

• CAFC:– Substantial benefits to registration– Denying a benefit because of protected speech

penalizes and inhibits that speech– Burdening some speakers and benefiting others

creates strong disincentive for some expressions and not others

In re Tam: Government Speech

• Gov. argues ®, placement on Principal Register, and certificate are gov. speech outside First Amendment

• CAFC: If true, then gov. could prohibit copyright registration of works immoral, scandalous, or disparaging to others.

In re Tam: Government Subsidy

• Gov. argues TM reg is a subsidy exempt from strict scrutiny

• CAFC:– Lanham Act not under spending clause– Even if a TM is a subsidy, cannot deny benefit

based on protected speech

In re Tam: Concurring and Dissenting Op

• Concurring: O’Malley and Wallach– Also unconstitutionally vague under 5th

Amendment“[c]onsists of or comprises . . . matter which

may disparage. . .”• Concurring/Dissenting: Lourie and Reyna

– Statute is constitutional as applied to purely commercial trademarks, but not as to core political speech

– Unconstitutional as applied to Tam, not on its face

In re Tam: Concurring and Dissenting Op

• Dissenting: Lourie– Doing this for 100 years, why is it a problem now?– Can still use the mark. Doesn’t stop it from being

source identifying– Refusal to register is not denial of free speech

• Dissenting: Reyna– Trademarks are commercial speech. SCOTUS said

so: Intermediate scrutiny applies.– §2(a) is narrowly tailored to directly advance a

substantial gov interest– Marks can threaten gov interest in orderly flow of

commerce (e.g. SPICS NOT WELCOME)

In re Tam: What About the Redskins?

• REDSKINS found disparaging in district court. Now on appeal before the 4th Circuit– 15 USC 1071 gives option for CAFC or DC in an

appeal from TTAB ruling• CAFC ruling not binding on the 4th Circuit, but

ruling will likely be considered.• Many believe SCOTUS will take up the case.