In re Tam

June 18, 2015 • Legal Briefs
By Megan L. Brown, Joshua S. Turner, Ilya Shapiro, & Trevor Burrus

Simon Tam wanted to take back and own what had previously been used as an ethnic slur by calling his Asian‐​American rock band “The Slants.” The Patent and Trademark Office found that this trademark was disparaging to Asians, however, so refused to register it under § 2(a) of the Lanham Act. This provision says, among other things, that the PTO may refuse to register a trademark that “[c]onsists of … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This refusal to register the trademark was affirmed by a three‐​judge panel of the U.S. Court of Appeals for the Federal Circuit. But then the entire Federal Circuit—without being asked!—decided to erase that decision and consider whether § 2(a), or at least its application here, violates the First Amendment. Cato and the Rutherford Institute have filed a brief supporting Tam’s trademark petition at this expanded appellate stage. Registration, although not required to use a particular logo or other mark, provides a variety of benefits, such as the assumption of nationwide notice, extra damages and attorney fees during litigation, and other intellectual property‐​related advantages. But § 2(a) conditions these benefits on not using expressions with which the government disagrees, which is clear viewpoint discrimination. The government’s position effectively gives pride of place to hypothetical people who may be hypothetically offended—but even offensive speech is protected by the First Amendment and courts have prohibited the use of a heckler’s veto to allow the restriction of protected speech. Because the Trademark Office’s action directly burdens speech, to sustain it, the government needs to a show that it’s the only way to achieve a compelling interest. But even if the putative trademark were considered to be purely commercial speech—which currently enjoys less constitutional protection than other kinds—the registration‐​rejection would still fail because people can use the mark without registration (i.e., it’s not fraudulent or misleading). And nobody is saying that registering a trademark represents government speech or even government endorsement of private speech. Limiting Tam’s ability to enjoy all the fruits of his preferred band name simply violates the First Amendment. The Federal Circuit should let The Slants rock on!

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