So What's In A Name? U.S. Supreme Court Hears Oral Argument In Lee v. Tam Trademark Case
On January 18, 2017, the U.S. Supreme Court heard oral argument in the case of Lee v. Tam, Case No. 15-1293. Simon Tam, the founder of the band “The Slants,” whose members are Asian-American, had sought registration of The Slants mark with the Patent and Trademark Office. Tam was denied registration by the PTO on the grounds that the requested mark was a disparaging racial epithet under the relevant statute, 15 U.S.C 1052(a). That statute prohibits the registration of marks that may disparage persons, institutions, beliefs or national symbols. The PTO denied the registration despite acknowledging that the band did not seek to disparage anyone and that its sincere intent was to “reclaim” the word as a symbol of Asian-American pride. The Trademark Trial and Appeal Board affirmed the PTO’s denial of registration. Tam then appealed to the Federal Circuit, which held the disparagement provision under Section 1052 was unconstitutional and ruled in Tam’s favor.
During oral argument before the Supreme Court, the PTO argued that section 1052 gave the PTO the right to refuse registration of a mark that might disparage others. In the PTO’s view, the restriction under section 1052 places a reasonable limit on access to a government program (the federal trademark registration program) rather than a restriction on speech and as such, does not violate the First Amendment. The PTO also took the view that because the primary purpose of trademarks is to serve as a source identifier for a good or service, Congress had the legitimate authority to issue laws that deny registration for disparaging marks because freedom of expression is not a primary purpose of trademark law. The PTO also noted that its denial of registration did not stop the band from using the mark in commerce, engaging in expression or debate or from filing lawsuits if others used the mark in violation of the band’s rights.
Tam’s position was that the government was engaging in illegal viewpoint based discrimination. In his view, because the purpose of trademark law is commercial in nature-to identify the source of goods and services, the PTO should not get involved in the non-commercial aspects of a mark-such as expressing a particular view or opinion, without due consideration of the First Amendment. Tam also argued that even if The Slants could still file lawsuits to protect their trademark rights under Section 43 of the Lanham Act or under common law, those protections were inferior to the broader benefits of federal trademark registration.
The approximate 50 page transcript of oral argument shows the Justices jousting with the attorneys on a number of issues, including the implications of the PTO’s ruling on the First Amendment, libel and slander law, time, place and manner restrictions, the grey line separating commercial and non-commercial speech and other marks that the PTO had already registered which were arguably even more disparaging. The Justices also use various hypotheticals to challenge the attorneys’ arguments. One of the more humorous portions of the transcript has Justice Ginsberg referring to the late comedian George Carlin’s “seven dirty words,” prompting laughter from the audience. On balance, the Court seemed inclined to rule in favor of Tam. However, we’ll have to wait and see. We can probably expect a decision no later than June 2017. If the Court rules in favor of Tam, the decision could have a significant impact on the pending litigation in the Fourth Circuit between the Washington Redskins and the PTO related to the cancellation of six Redskin trademark registrations. It should be an interesting Summer.
