The Supreme Court of the USA will decide the case of Lee v. Tam in 2017: Can you register a disparaging trademark, namely, THE SLANTS for Entertainment in the nature of live performances by a musical band.
The Supreme Court will decide whether the constitutional right to freedom of speech overrides the disparaging trademarks provision in US trademark law.
A provision of the Lanham Act, 15 U.S.C. 1052(a), says that no trademark shall be denied registration on account of its nature unless it:
“consists of … matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
But is this provision invalid under the Free Speech Clause of the First Amendment?
The United States Patent and Trademark Office (“USPTO”) refused to approve the mark on the grounds that “The Slants” is disparaging toward persons of Asian descent. The applicant, Mr. Simon Shiao Tam, is Asian.
On appeal, the Trademark Trial and Appeal Board (“TTAB”) affirmed the denial to register the trademark. Tam appealed the TTAB’s decision to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) on the grounds that 15 U.S.C. 1052(a), which was the basis for the rejection by both the USPTO and the TTAB, is unconstitutional. A panel of the Federal Circuit reaffirmed the TTAB’s decision again finding that the mark was disparaging.
Additionally, the Federal Circuit panel found 15 U.S.C. 1052(a) constitutional based on precedent from In re McGinley. The Federal Circuit quoted the United States Court of Customs & Patent Appeals from In re McGinley saying: “With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.”
The Federal Circuit judges sua sponte (Latin for on their own motion) vacated its panel decision and organized a rehearing of the case. The en banc rehearing of the case held that the disparagement section of the Lanham Act was unconstitutional. The en banc Federal Circuit reasoned that the provision would fail under both intermediate and strict scrutiny saying, “every rejection under the disparagement provision is a message-based denial of otherwise available legal rights,” and thus “§ 2(a) is invalid on its face.”
What will the US Supreme Court do? Affirm?
Ronald Coleman, of GOETZ FITZPATRICK LLP, is representing Mr. Tam before the US Supreme Court.
Mr. Tam first applied to register his band’s name The Slants in USPTO trademark Serial Number 77952263 for Entertainment, namely, live performances by a musical band in March 2010. The USPTO trademark examiner refused the application. Mr. Tam asked the examiner to reconsider the refusal instead of appealing the final refusal to the TTAB. So Mr. Tam application went abandoned. The examiner wrote:
The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed. See 37 C.F.R. §2.64(b); TMEP §§715.03, 715.03(a), (c).
The TMEP states:
An applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2). Filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03.
So Mr. Tam reapplied to register his band’s name The Slants in USPTO trademark Serial Number 85472044 for Entertainment, namely, live performances by a musical band in November 2011. The USPTO trademark examiner refused the application.
Interestingly enough, the USPTO recently allowed an application for “THE SLANT” for Vehicle suspension parts, namely shock absorbers, coil springs, and suspension springs in USPTO Trademark Serial Number 86804165 , without any objections regarding whether the trademark is disparaging.
I wonder what would have happened if Mr. Tam first applied to register THE SLANTS for t-shirts and hats under a corporate name, instead of his own Asian name.
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.