and leader, Simon Shiao Tam, says he started the all-Asian group and named it The Slants to “re-appropriate” the racial iWitness slur. He explains that “we want to take on these stereotypes that people have about us, like the slanted eye, and own them.” In Can Trademark Laws re Tam, 808 F.3d 1321, 1332 (Fed. Cir. 2015) (en banc). From its humble beginnings at Dictate What Is local dive bars 10 years ago, The Slants— who describe themselves as “Chinatown Disparaging? Dance Rock”—have risen to fame, now playing dance rock music all over the world. Check out The Slants’ press release, New Music Video: Heartbeat Is Heaven (Sept. 29, 2016), http://www.theslants. Yuri Mikulka and Caleb Bean com/new-music-video-heartbeat-is- The authors are intellectual property litigators with Manatt, Phelps & Phillips LLP, Costa Mesa, California. heaven/. Although its fan base may be millennials in plaid shirts with tattoos, the band now has the rapt attention of prominent judges and lawyers around the nation who are attempting to reconcile this unusual intersection of the federal trademark law and the First Amendment and determine what can be deemed dis- paraging in this modern age.

Can federal trademark law prohibit reg- trademark registration of the trademark istration of trademarks that are dispar- THE SLANTS. This has been a subject Journey Through the Legal aging? Currently, yes. But how do you of heated controversy. The USPTO be- Maze determine what is disparaging? And lieves the mark should not be registered The band’s journey through the legal wouldn’t such a prohibition violate our because it is disparaging, while the U.S. maze started in 2011 when Mr. Tam filed First Amendment right to free speech? Court of Appeals for the Federal Circuit for what he thought was a routine federal Possibly. believes the disparagement clause is alto- trademark registration with the USPTO. Under section 2(a) of the Lanham Act, gether unconstitutional. Even groups that While common law provides trademark 15 U.S.C. § 1052(a), the U.S. Patent and are often aligned, such as the National protection without a federal registration, Trademark Office (USPTO) can refuse a Asian Pacific American Bar Association registering a trademark with the USPTO trademark registration that “comprises and the American Civil Liberties Union affords important protection and benefits. immoral, deceptive, or scandalous mat- disagree on this issue. For instance, registration provides a na- ter; or matter which may disparage.” In the 70 years of its existence, sec- tionwide constructive notice of the trade- The USPTO has applied this disparage- tion 2(a) has never been reviewed by the mark ownership, as well as presumption ment clause to refuse registrations such higher court. Now, for the first time, the of trademark validity and ownership, and as HAVE YOU HEARD THAT SATAN Supreme Court will weigh in on the va- the mark becomes incontestable in five IS A REPUBLICAN?, DEMOCRATS lidity of the disparagement clause and years; registration also provides for en- SHOULDN’T BREED, and THE whether it can be applied to prohibit dis- hanced monetary and equitable relief and CHRISTIAN PROSTITUTE. paraging marks like THE SLANTS. recovery of attorney fees under certain But is a term still disparaging if the Since at least World War II, “slants” circumstances. intended target is the one seeking to has been used as a racial slur to refer to When the USPTO refused Mr. Tam’s register the disparaging mark? Consider the eye shape of individuals of Asian de- trademark application on the grounds Lee v. Tam. That case involves an all- scent. But a rock band in Portland, Oregon, that the mark is disparaging to persons Asian rock band’s request for federal seeks to change that. The band’s founder of Asian descent, Mr. Tam appealed to

12 Litigation the Trademark Trial and Appeal Board. First Amendment. This is because, the • Whether the disparagement clause is The board affirmed the USPTO’s decision, court explained, it “penaliz[es] private contrary to the First Amendment; concluding that “[t]he fact that applicant speech merely because [the government] has good intentions underlying his use of disapproves of the message it conveys.” • Whether the disparagement clause is the term does not obviate the fact that a Id. at 1327. The Federal Circuit recog- unconstitutionally vague under the substantial composite of the referenced nized that, while some trademarks “con- First and Fifth Amendments; and group find the term objectionable.” In re vey hurtful speech that harms members Tam, 2013 TTAB LEXIS 485, at *8. of oft-stigmatized communities,” the • Whether the disparagement clause Mr. Tam then appealed to the U.S. First Amendment “protects even hurtful bars the registration of THE SLANTS Court of Appeals for the Federal Circuit, speech.” Id. at 1328. It further noted that, trademark. arguing that the disparagement clause under the government’s logic, Congress is contrary to the First Amendment and could pass a law prohibiting the copy- Supreme Court unconstitutionally vague. The Federal righting of works containing racial slurs, In September 2016, the Supreme Court Circuit initially affirmed the Trademark religious insults, ethnic caricatures, and granted certiorari. The first issue above Trial and Appeal Board’s decision. In a misogynistic images. Id. at 1351. will depend on whether the disparage- surprising change of course in December In response, the government filed a pe- ment clause restricts speech and, if so, 2015, however, the Federal Circuit, sitting tition for a writ of certiorari, requesting whether that speech is private or com- en banc, vacated the board’s decision and that the Supreme Court decide the sin- mercial. It is a bedrock principle of the remanded it for further proceedings. In gle issue of whether the disparagement First Amendment that the government re Tam, 808 F.3d 1321. The majority on clause violates the First Amendment. In may not restrict private speech because the Federal Circuit concluded that the an unusual move, Mr. Tam agreed that it disapproves of its message. Content- disparagement clause is facially inval- certiorari should be granted but expand- based and viewpoint-based burdens on id under the Free Speech Clause of the ed the questions presented as follows: private speech receive the Court’s highest

Vol 43 | No 2 | winter 2017 [CRD Art Credit] 13 level of scrutiny, and restrictions that for disparagement, which is reflected in Appeals for the Fourth Circuit. The team prevent this type of speech are typically published administrative and judicial de- argued in its amicus brief in In re Tam overturned. If the disparagement clause cisions. It also argues that the USPTO ex- that the disparagement clause is uncon- restricts only commercial speech, how- aminers are not permitted to apply their stitutional and vague because, among ever, the Court would apply intermediate own subjective views; rather, they are other things, a mark, although disparag- scrutiny. directed to consider whether record evi- ing in the past, may not be so today. Pro- Mr. Tam argues that the speech at dence establishes that a substantial com- Football, Inc., argued that the USPTO issue is private and that the disparage- posite of the referenced group would find cancelled the Redskins marks not because ment clause imposes a significant con- the mark disparaging. they are disparaging to Native Americans tent-based and viewpoint-based burden The final issue above is whether THE today, but because they were decades ago on private speech. The government ar- SLANTS is disparaging, as used by the when the marks were first registered. gues that the disparagement clause does band. Mr. Tam argues that it is not be- As a matter of fact, when the dispar- not prohibit speech at all, nor does it pro- cause he uses the mark as a badge of pride agement clause took effect as part of the scribe any conduct or restrict the use of for Asians. The government argues that a Lanham Act in 1946, our society was in- any trademark. After all, the USPTO ar- trademark registration is not dependent deed very different. That was the year the gues, Mr. Tam has common-law trade- on the mark holder’s intended use; there- film It’s a Wonderful Life was released, mark protection and may continue to fore, regardless of Mr. Tam’s intent, Mr. Benjamin Spock’s child care classic was use the trademark, albeit without feder- Tam’s mark is disparaging to persons of published, and the baby boom generation al trademark registration. According to Asian descent. began, with society fixated on stability the government, Mr. Tam simply did not after the war and forming nuclear family meet the eligibility criteria for the federal units. Personal opinions and beliefs were trademark registration program; there- A decision that the not top priority for most, and companies fore, the government has a substantial branded and marketed carefully to appeal interest in declining its benefit. disparagement clause to this conservative era. We now live in a On the second issue, whether the dis- diverse and multicultural society where paragement clause is unconstitution- is unconstitutional personal views and ideas, however dif- ally vague, Mr. Tam argues that deter- ferent or radical, are routinely expressed mining whether a mark is disparaging would have immediate and instantly published via the Internet is highly subjective and that, as a result, or social media without much forethought the USPTO has produced a bewildering and far-reaching or consideration. Branding and marketing array of decisions granting or denying reflect this trend, with edgy and sensa- registrations seemingly at random. For effects. tional terms and phrases often used to instance, the USPTO has denied registra- capture the attention of the targeted pub- tion to HAVE YOU HEARD SATAN IS A lic regardless of whether they may offend REPUBLICAN but has allowed registra- A Supreme Court decision that the others. tion to THE DEVIL IS A DEMOCRAT. disparagement clause is unconstitutional Given this backdrop, it will be inter- The USPTO has also allowed registration would have immediate and far-reaching esting to see whether the Supreme Court of marks that some may view as disparag- effects. For one thing, the USPTO would will determine that this 70-year-old ing: YELLOWMAN, REDMAN, MAMMY no longer be able to refuse or cancel a trademark law prohibiting registration JAMIA’S, UPPITY NEGRO, YOU CAN’T trademark registration that it views as of disparaging marks still makes sense MAKE A HOUSEWIFE OUT OF A disparaging. This would mean any mark, today or whether it needs to be updated WHOLE, MURDER FOR HIRE. Indeed, no matter how offensive or disparaging, or jettisoned to keep pace with the ever- the Federal Circuit found “no rationale can receive federal trademark registra- changing views of our modern society. q for the USPTO’s seemingly arbitrary tion as long as it meets other eligibil- registration decisions, let alone one that ity requirements. This would also be a would give applicants much guidance.” big win for similar cases waiting in the In re Tam, 808 F.3d at 1342 n.7. The gov- wings, such as Blackhorse v. Pro Football, ernment disagrees that the disparage- Inc. That case arises from the USPTO’s ment clause is vague. It argues that the cancellation of the Redskins’ trademarks USPTO uses an objective, established test and is pending before the U.S. Court of

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