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 Marks
THE CHRISTIAN PROSTITUTE
MORMON WHISKEY
ABORT THE REPUBLICANS
DEMOCRATS SHOULDN’T BREED
URBAN INJUN
SQUAW VALLEY
AMISH HOMO
STOP THE ISLAMISATION OF
AMERICA
REDSKINS
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.