In re Simon Shiao Tam

Docket No. 2014-1203 (Ser. No. 85/472,044)

Dec. 22, 2015
Decided en banc

Brief Summary: The refusal by the PTO to register marks it considers disparaging under § 2(a) of the Lanham Act found unconstitutional under the First Amendment.

Summary: Mr. Tam appealed USPTO refusal to register his mark THE SLANTS, registered for his band named as such to make a statement about racial and cultural issues in the US (“to ‘reclaim’ and ‘take ownership’ of Asian stereotypes”), as “likely disparaging to ‘persons of Asian descent’ under § 2(a)” (Lanham Act). On pp. 8-9 of the opinion, a list of marks the PTO has previously found to be (or to potentially be) disparaging, including REDSKINS (the registered mark of the NFL football Washington Redskins) which the PTO cancelled in 2014, and therefore relevant to this decision. A “disparaging mark” is one that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison” (In re Geller, FC 2014). In making this determination, the PTO considers: 1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and 2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite (“although not necessarily a majority”) of the referenced group “in the context of contemporary attitudes” (TMEP § § 1203.01 and 1203.03(b)(i)). The Board decision affirming the TM examiner’s rejection was previously affirmed by a panel of the FC (In re Tam, FC 2015), which “foreclosed Mr. Tam’s arguments that § 2(a) is unconstitutional, including Mr. Tam’s argument that § 2(a) violates the First Amendment on its face” (and citing In re McGinley (CCPA 1981) (the refusal to register a mark…does not bar the applicant from using the mark, and therefore does not implicate the First Amendment)). The FC decided to reconsider this issue en banc because, e.g., “the McGinley analysis was cursory, without citation to legal authority, and decided at a time when the First Amendment had only recently been applied to commercial speech” and other courts have relied on McGinley’s reasoning.

The en banc court concluded that “it cannot be reasonably argued” that the refusal to register disparaging marks under § 2(a) “is not a content-based restriction or that it is a content-neutral regulation of speech” “it is the nature of the message conveyed by the speech which is being regulated…it discriminates on the basis of…‘the idea or message expressed’…it targets ‘viewpoints [in] the marketplace’…It does so as a matter of avowed and undeniable purpose, and it does so on its face…A law is facially invalid if a ‘substantial number of its applications are unconstitutional….”) The opinion explains these conclusions are supported by the government’s arguments that it “disagree[s] with the message [disparaging marks] convey[]” and “repeatedly asserts if ought to be able to prevent the registration of ‘the most vile racial epithets and images…to dissociate itself from speech it finds odious”. “Yet”, the opinion explains, “the government registers marks that refer to particular ethnic groups in positive or neutral ways…“even if that mark contains language that would be offensive in another context” such as DYKES ON BIKES which was allowed since “the applicant showed the term was often enough used with pride among the relevant population”. Thus, the FC concluded that “Section 2(a) is a viewpoint-discriminatory regulation of speech” that does not survice the strict scrutiny standard standard of a First Amendment violation analysis. It is also found “[t]he government cannot escape strict scrutiny by arguing that § 2(a) regulates commercial speech” since “it is always a mark’s expressive character, not its ability to serve as a source identifier, that is the basis for the disparagement exclusion”. For instance, the opinion explained, “STOP THE ISLAMISATION OF AMERICA is expressive” was refused because it’s “admonition to ‘STOP’…‘sets a negative tone and signals that Islamisation is undesirable’” (similar reasoning regarding HEEB and SQUAW VALLEY, “marks convey an expressive message over and above their function as source identifiers”). And “commercial speech that is ‘inextricably intertwined’ with expressive speech is treated as expressive speech under the First Amendment when the expressive aspect is being regulated” (Riley, US 1988).

It also rejected the government’s arguments that it is “immune from First Amendment scrutiny because it prohibits no speech”, “trademark registration is government speech” (not the actual speech but, e.g., use of the ® symbol), and “§ 2(a) merely withholds a government subsidy for Mr. Tam’s speech” (“This idea…is anathema to the First Amendment…labeling this sort of interest as substantial creates an end-run around the unconstitutional conditions doctrine, as virtually all government benefits involve the resources of the federal government in a similar sense.”) It also concluded that “[c]ontrary to the suggestion by the government, Mr. Tam is likely also barred from registering his mark in nearly every state” since “virtually all states have adopted the” Model State Trademark Act which “contains language barring a mark from registration if it ‘consists of or comprises matter which may disparage” (“The government’s suggestion that Mr. Tam has common-law rights to his mark appears illusionary.”)

In conclusion, the opinion stated: “Although we find the disparagement provision of § 2(a) unconstitutional, nothing we say should be viewed as an endorsement of the mark at issue. We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities….But much the same can (and has been) said of many decisions upholding First Amendment protection of speech that is hurtful or worse…the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.” Mr. Tam’s case was therefore remanded to the Board. Judges O’Malley and Wallach provided a concurring opinion. Judges Dyk, Lourie and Reyna concurred-in-part and dissented-in-part. Judges Lourie and Reyna also separately dissented.

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