Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA718611
`ESTTA Tracking number:
`01/06/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056538
`Defendant
`Cook Collection Attorneys, P.L.C.
`DAVID J COOK
`COOK COLLECTION ATTORNEYS PLC
`165 FELL STREET
`SAN FRANCISCO, CA 94102
`UNITED STATES
`Cook@squeezebloodfromturnip.com
`Other Motions/Papers
`David J. Cook
`Cook@squeezebloodfromturnip.com
`/s/ David J. Cook
`01/06/2016
`2016_01_06_09_42_44.pdf(1521354 bytes )
`2016_01_06_09_43_46.pdf(2632931 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92056538
`Registration No. 3257604
`
`) )
`
`)
`)
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`SCOTT R. SMITH, an individual,
`
`Petitioner,
`
`vs.
`
`COOK COLLECTION
`ATTORNEYS, P.L.C., a California
`corporation,
`
`Respondent.
`
`STATUS REPORT RE MOTION TO STAY AND SUSPEND PROCEEDINGS
`
`PENDING OUTCOME OF IN RE: SIMON SHIAO TAM, UNITED STATES
`COURT OF APPEALS FOR THE FEDERAL CIRCUIT CASE NUMBER 2014-1203
`
`The Federal Circuit has rendered an opinion in the case entitled In re: Simon Shiao
`
`Tam, case number 2014-1203, 2015 WL 9287035 on December 22, 2015, a copy which is
`
`attached hereto as Exhibit “A.”
`
`DATED: January 5, 2016
`
`COOK COLLECTION ATTORNEYS
`
`/s/ David J. Cook
`By:
`DAVID J. COOK, ESQ. (SBN 060859)
`Attorneys for Respondent
`COOK COLLECTION ATTORNEYS, P.L.C.
`
`

`
`i
`
`

`
`In re Tam
`
`United States Court 0l'Appca1s. Federal Circuit. | December 22, 2()lS I --- F.3d ---- 1 2015 WL 0287035
`
`In re Tam, No. 2014-I203, 2015 WL 9287035 (Fed. Cir. Dec. 22, 2015) Synopsis ((1.1)
`--- F.3d ----, 2015 WL 9287035
`West Hcadnotes
`(N)
`
`Outline
`
`Attorneys and Law
`Finns (p.l0)
`Opinion (p.l 1)
`Concurring Opinion
`(P31)
`Dissenting Opinion
`(p.42)
`Concurring In Part/
`
`Dissenting in Part
`
`(P-35)
`All Citations (p.47)
`
`Document Details
`
`standard Citation:
`All Citations:
`
`Search Details
`Search Query:
`Jurisdiction:
`
`Delivery Details
`Date:
`Delivered By:
`Client ID:
`
`Status icons:
`
`H»
`
`in re simon shiao tam
`Federal Cir.
`
`January 5, 2016 at 7:26 PM
`David Cook
`ZX
`
`

`
`In re Tam. --- F.3(l
`
`(2015)
`
`2015 WL 9287035
`
`Only the Westlaw citation is currently available.
`United States Court of Appeals,
`Federal Circuit.
`
`In re Simon Shiao TAM.
`
`No. 2014-1203.
`
`| Dec. 22, 2015.
`
`Synopsis
`
`Background: Trademark applicant sought review of the
`decision of the United States Trademark Trial and Appeal
`
`Board, 20l3 WL 5498164, which affirmed an examining
`
`attorney's refusal to register the trademark “THE SLANTS"
`for a musical band, on grounds that the mark was disparaging
`
`to people of Asian descent. The Court of Appeals, Moore,
`Circuit Judge, 785 F.3d 567, affirmed. The Court of Appeals
`sua sponte ordered rehearing en banc.
`
`Holdings: The Court of Appeals, en banc, Moore, Circuit
`Judge, held that:
`
`the prohibition on the registration of disparaging
`[I]
`trademarks was subject to strict scrutiny under the First
`
`Amendment, abrogating In re McGinley. 660 F.2d 48];
`
`the prohibition on the registration of disparaging
`[2]
`trademarks was not a regulation of commercial speech;
`
`the prohibition on the registration of disparaging
`[3]
`trademarks significantly chilled private speech;
`
`the registration of trademarks did not constitute
`[4]
`government speech;
`
`[5]
`
`the registration of trademarks was not part of a
`
`government subsidy program; and
`
`[6] even assuming that the prohibition on the registration
`of disparaging trademarks was a regulation of commercial
`speech,
`the government
`lacked a substantial government
`interest for prohibiting disparaging marks.
`
`Vacated and remanded.
`
`O'Malley, Circuit Judge, filed a concurring opinion, joined by
`Wallach, Circuit Judge.
`
`Dyk, Circuit Judge, filed an opinion concurring in part and
`dissenting in part, joined by Lourie and Reyna, Circuit
`Judges.
`
`Lourie, Circuit Judge, filed a dissenting opinion.
`
`Reyna, Circuit Judge, filed a dissenting opinion.
`
`West Headnotcs (40)
`
`ll]
`
`Trademarks
`
`.= Purpose and Construction in General
`382T Trademarks
`382Tl
`In General
`
`382Tkl003 Constitutional and Statutory
`Provisions
`
`382Tkl005 Purpose and Construction in General
`
`Congress's purpose in enacting the Lanham
`Act was to advance the two related goals
`
`of trademark law: first,
`
`to protect the public
`
`so it may be confident that,
`
`in purchasing a
`
`product bearing a particular trade-mark which
`it
`favorably knows,
`it will get
`the product
`which it asks for and wants to get, and second,
`
`to ensure that a markholder can protect his
`
`investment from misappropriation by pirates and
`cheats. Lanham Tradc—Mark Act, § l ct scq., 15
`U.S.C.A. § 105] ct seq.
`
`Cases that cite this headnote
`
`[2]
`
`Trademarks
`
`.. — Substantive Rights or Procedural
`Advantages in General
`382T Trademarks
`
`382TVll Registration
`382TVll(C) Effect of Federal Registration
`382Tkl 356 Substantive Rights or Procedural
`Advantages in General
`The Lanham Act confers important legal rights
`and benefits on trademark owners who register
`
`their marks,
`
`including both substantive and
`
`procedural rights that are unavailable in the
`
`

`
`In re Tam.
`
`F.3tl ---- (2015)
`
`absence of federal registration. Lanham Trade-
`Mark Act,§ I et seq.. I5 U.S.C.A. § I051 et seq.
`
`Cases that cite this hcadnote
`
`l3l
`
`Trademarks
`
`False or Deceptive Matter
`382T Trademarks
`382Tll Marks Protected
`
`382Tkl073 False or Deceptive Matter
`
`A disparaging mark, as would be ineligible for
`trademark registration under the Lanham Act,
`
`is a mark which disltonors by comparison with
`what is inferior, slights, depreeates, degrades, or
`affects or injures by unjust comparison. Lanham
`Act, 15? 2(a). 15 U.S.C.A. § l052(a).
`
`Cases that cite this hcadnote
`
`l4]
`
`Constitutional Law
`
`Content-Based Regulations or Restrictions
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression. and
`Press
`
`In General
`92XVlll(A)
`ln General
`92XVlll(A)l
`92kl5 l 6 Content-Based Regulations or
`Restrictions
`92kl5l7 In General
`
`Content-based regulations are presumptively
`invalid under the First Amendment. U.S.C.A.
`Const.Amend. I .
`
`Cases that cite this hcadnote
`
`l5!
`
`Constitutional Law
`
`Content-Based Regulations or Restrictions
`Constitutional Law
`
`Strict or Exacting Scrutiny; Compelling
`Interest Test
`
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression. and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl5l6 Content-Based Regulations or
`Restrictions
`92kl5l7 In General
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`in General
`92XVlll(A)l
`92k] 5 l 6 Content-Based Regulations or
`Restrictions
`
`92l<l5l8 Strict or Exaeting Scrutiny; Compelling
`Interest Test
`
`those that
`Content-based laws,
`based on
`its
`communicative
`
`target speech
`content,
`are
`
`presumptively unconstitutional under the First
`Amendment and may be justified only if the
`government proves that
`they are narrowly
`
`tailored to serve compelling state interests.
`U.S.C.A. Const.Amend. 1.
`
`Cases that cite this hcadnote
`
`l6!
`
`Constitutional Law
`
`Content-Based Regulations or Restrictions
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl5l6 Content-Based Regulations or
`Restrictions
`92kl5l7 In General
`
`A regulation is content-based under the First
`Amendment even when its reach is defined
`
`simply by the topic or subject matter of the
`covered speech. U.S.C.A. Const.Amend. l.
`
`Cases that cite this hcadnote
`
`l7]
`
`Constitutional Law
`
`-.~ Viewpoint or ldca Discrimination
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`[nGeneral
`92XVlll(A)l
`92kl507 Viewpoint or Idea Discrimination
`
`the
`targeting
`regulations,
`Viewpoint-based
`substance of the viewpoint expressed, are even
`more suspect
`than content-based regulations
`under
`the
`First Amendment. U.S.C.A.
`Const.Amend. l.
`
`Cases that cite this hcadnote
`
`

`
`In re Tam. «- F.3d ---- (2015)
`
`I8!
`
`Constitutional Law
`
`Strict or Exacting Scrutiny; Compelling
`interest Test
`
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression. and
`Press
`
`In General
`92XVlll(A)
`in General
`92XVlll(A)l
`92kl506 Strict or Exacting Scrutiny; Compelling
`Interest Test
`
`The First Amendment
`
`requires heightened
`
`scrutiny whenever the government creates a
`regulation of speech because of disagreement
`with the message it conveys; this is true whether
`
`the regulation bans or merely burdens speech.
`U.S.C.A. Const.Amend. l.
`
`Cases that cite this headnote
`
`|9|
`
`Constitutional Law
`
`Strict or Exacting Scrutiny; Compelling
`interest Test
`
`92 Constitutional Law
`
`92XVlll Freedom of Speech. Expression, and
`Press
`
`In General
`92XVlll(A)
`in General
`92XVlll(A)l
`92kl5l6 Content-Based Regulations or
`Restrictions
`
`92kl5l8 Strict or Exacting Scrutiny; Compelling
`Interest Test
`
`Heightened judicial scrutiny is warranted when
`an act is designed to impose a specific, content-
`based burden on protected expression under the
`First Amendment. U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`I10]
`
`Constitutional Law
`
`Strict or Exacting Scrutiny; Compelling
`interest Test
`
`92 Constitutional Law
`
`92XVlll Freedom of Speech. Expression. and
`Press
`
`In General
`92XVlll(.A)
`in General
`92XVllI(A)l
`92kl5 16 Content-Based Regulations or
`Restrictions
`
`92kl5l8 Strict or Exacting Scrutiny; Compelling
`Interest Test
`
`The distinction between laws burdening and
`
`laws banning speech is but a matter of degree;
`the govemment's content-based burdens must
`satisfy the same rigorous scrutiny under the First
`Amendment as its content-based bans. U.S.C.A.
`Const.Amend. l.
`
`Cases that cite this headnote
`
`I11]
`
`Constitutional Law
`
`Freedom of Speech, Expression, and Press
`Constitutional Law
`
`A Content-Based Regulations or Restrictions
`.-
`92 Constitutional Law
`
`92XVlll Freedom of Speech. Expression, and
`Press
`
`in General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl490 in General
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVllI(A)
`In General
`92XVlll(A)l
`92k! 5 l 6 Content-Based Regulations or
`Restrictions
`92kl5l7 lnGeneral
`
`Lawmakers may no more silence unwanted
`
`than
`utterance
`its
`burdening
`by
`speech
`by censoring its content under
`the First
`Amendment. U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`I12]
`
`Constitutional Law
`.9 - Trademarks and Trade Names
`
`Trademarks
`
`Validity
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`92XVlll(C) Trade or Business
`92kl604 Trademarks and Trade Names
`382T Trademarks
`
`382TVlI Registration
`382TVll(A)
`in General
`382Tk l 231 Constitutional and Statutory
`Provisions
`
`

`
`In re Tam,
`
`F.3d ---— (2015)
`
`382Tkl234 Validity
`
`The Lanham Act's prohibition on the registration
`of disparaging trademarks discriminated on the
`basis of the message and viewpoint conveyed,
`
`and thus the prohibition was not content-neutral
`
`or viewpoint-neutral and was subject to strict
`
`scrutiny under the First Amendment, despite
`contention that the prohibition only eliminated
`
`certain disparaging words, where the test for
`
`disparagement, whether a substantial composite
`of the referenced group would find a mark
`
`disparaging, made clear that the nature of the
`message conveyed by the speech was being
`
`regulated, and the avowed purpose of the
`prohibition was to target viewpoints in the
`
`marketplace; abrogating In re McGinley. 660
`F.2d 48!. U.S.C.A. Const.Amend. 1; Lanham
`
`Act, § 2(a), I5 U.S.C.A. § I052(a).
`
`Cases that cite this headnote
`
`l|3l
`
`Constitutional Law
`
`Content-Neutral Regulations or Restrictions
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVIII(A)
`In General
`92XVlIl(A)l
`92klSl I Content-Neutral Regulations or
`Restrictions
`92kl5l2 In General
`
`Listeners‘ reaction to speech is not a content-
`neutral basis for
`regulation under the First
`Amendment. U.S.C.A. Const.Amend. I.
`
`Cases that cite this headnote
`
`ll4l
`
`Constitutional Law
`
`Viewpoint or Idea Discrimination
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVIIl(A)
`In General
`92XVlII(A)I
`92k I 507 Viewpoint or Idea Discrimination
`
`When the government discriminates against
`speech because it disapproves of the message
`conveyed by the speech, it discriminates on the
`basis of viewpoint under the First Amendment.
`U.S.C.A. Const.Amcnd. I.
`
`Cases that cite this headnote
`
`||5l
`
`Constitutional Law
`.— — Trademarks and Trade Names
`
`Trademarks
`
`Validity
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`92XVlll(C) Trade or Business
`92kI604 Trademarks and Trade Names
`382T Trademarks
`
`382TVll Registration
`382TVII(A)
`In General
`382TkI23l Constitutional and Statutory
`Provisions
`
`382Tkl234 Validity
`
`The Lanham Act's prohibition on the registration
`
`the
`regulated
`trademarks
`disparaging
`of
`expressive aspects of the marks, and not the
`function of the trademarks as commercial
`
`speech, and thus the prohibition was not subject
`to lesser scrutiny as a regulation of commercial
`
`speech under the First Amendment, where the
`prohibition focused on the expressive message
`of the trademark, and the prohibition targeted
`speech that was of public concern, because it
`could be fairly considered as relating to any
`matter ofpolitical, social, or other concern to the
`
`community. U.S.C.A. Const.Amend. I; Lanham
`Act, § 2(a), I5 U.S.C.A. § l052(a).
`
`Cases that cite this headnote
`
`I16!
`
`Constitutional Law
`
`.— I Commercial Speech in General
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression. and
`Press
`
`In General
`92XVlll(A)
`92XVIII(A)2 Commercial Speech in General
`92kI535 In General
`
`Commercial speech is no exception to the
`need
`for
`heightened
`scrutiny
`under
`the
`First Amendment of content-based impositions
`
`communication of
`the
`seeking to curtail
`particular infonnation or messages. U.S.C.A.
`Const.Amcnd. I.
`
`

`
`In re Tam, --- F.3d ~--- (2015)
`
`Cases that cite this headnote
`
`l19|
`
`Constitutional Law
`..
`- Trademarks and Trade Names
`
`I17]
`
`Constitutional Law
`
`Strict or Exacting Scrutiny; Compelling
`interest Test
`
`Constitutional Law
`
`Difference in Protection Given to Other
`
`Speech
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`in General
`92XVlll(A)
`ln General
`92XVlll(A)l
`92kl506 Strict or Exacting Scrutiny; Compelling
`Interest Test
`92 Constitutional Law
`
`92XVlll Freedom of Speech. Expression, and
`Press
`
`In General
`92XVlll(A)
`92XVlll(A)2 Commercial Speech in General
`92kl537 Difference in Protection Given to Other
`
`Speech
`
`Strict scrutiny under the First Amendment must
`
`apply to a government regulation that is directed
`at the expressive component of speech; that the
`
`speech is used in commerce or has a commercial
`
`component should not change the inquiry when
`the government regulation is entirely directed
`
`to the expressive component of the speech.
`U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`l13l
`
`Constitutional Law
`
`Commercial Speech in General
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`in General
`92XVlll(A)
`92XVlll(A)2 Commercial Speech in General
`92klS35 In General
`
`inextricably
`is
`that
`speech
`Commercial
`intertwined with expressive speech is treated as
`expressive speech under the First Amendment
`when the expressive aspect is being regulated.
`U.S.C.A. Const.Amend. l.
`
`Cases that cite this headnote
`
`Trademarks
`
`Validity
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`92XVlll(C) Trade or Business
`92kl604 Trademarks and Trade Names
`382T Trademarks
`
`382TVll Registration
`382TVll(A)
`In General
`382Tk 1 Bl Constitutional and Statutory
`Provisions
`
`382Tkl234 Validity
`The Lanham Act's prohibition on the registration
`
`of disparaging trademarks significantly chilled
`private speech, and thus was subject to strict
`scrutiny review under the First Amendment,
`even if the denial of a trademark did not
`
`trademark
`ban any speech, where federal
`registration bestowed truly significant and
`financially valuable benefits upon markholders,
`the bar on the registration of disparaging marks
`
`was a strong disincentive to adopt a mark
`
`that might be deemed disparaging, and any
`common law rights in an unregistered trademark
`
`were largely illusory. U.S.C.A. Const.Amend. l;
`Lanham Act, § 2(a), 15 U.S.C.A. § l052(a).
`
`Cases that cite this headnote
`
`I20]
`
`Constitutional Law
`
`.-- Denial of Benefits
`
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl50l Denial of Benefits
`
`If the government could deny a benefit to a
`person because of his constitutionally protected
`speech or associations, his exercise of those
`freedoms would in effect be penalized and
`inhibited; this would allow the govcmment to
`
`produce a result which it could not command
`directly. U.S.C.A. Const.Amend. l.
`
`

`
`In re Tam. -~- F.3d ---- (2015)
`
`Cases that cite this headnote
`
`l2|l
`
`Constitutional Law
`
`Freedom of Speech, Expression, and Press
`Constitutional Law
`
`Content-Based Regulations or Restrictions
`92 Constitutional Law
`
`92XVlll Freedom of Speech. Expression, and
`Press
`
`In General
`92XVlll(A)
`In General
`92XV|ll(A)l
`92kl49O In General
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl5l6 Content~Based Regulations or
`Restrictions
`92kl5l7 In General
`
`Lawmakers may no more silence unwanted
`
`speech under the First Amendment by burdening
`its utterance than by censoring its content.
`U.S.C.A. Const.Amend. l.
`
`Cases that cite this headnote
`
`I22!
`
`Constitutional Law
`
`Freedom of Speech, Expression, and Press
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression. and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlII(A)l
`92kl490 In General
`
`A law may burden speech protected by the First
`Amendment even when it does so indirectly.
`U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`l23|
`
`Constitutional Law
`
`vagueness
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression. and
`Press
`
`InGencral
`92XVlll(A)
`In General
`92XVIll(A)l
`92kl524 Vagueness
`
`I".":."C
`
`A vague law that regulates speech on the basis
`of message raises special First Amendment
`concerns because of its obvious chilling effect on
`
`free speech. U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`I24]
`
`Constitutional Law
`Freedom of Association
`
`Constitutional Law
`
`;~ vagueness
`92 Constitutional Law
`92XVl Freedom of Association
`92kl440 In General
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl524 Vagueness
`
`If a law interferes with the right of free speech
`or ofassociation, a more stringent vagueness test
`
`should apply. U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`I25]
`
`Constitutional Law
`
`; - Freedom of Speech, Expression, and Press
`Constitutional Law
`
`Govemment-Sponsored Speech
`92 Constitutional Law
`
`92XVlll Freedom ofspeecli, Expression, and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl490 In General
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`92XVlll(A)3 Particular Issues and Applications
`in General
`
`92kl563 Govemment-Sponsored Speech
`
`The Free Speech Clause restricts government
`regulation of private speech; it does not regulate
`government speech. U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`

`
`In re Tam, --- F.3d ~--- (2015)
`
`l26|
`
`Trademarks
`
`Indication of Origin or Ownership;
`ldentification
`
`382T Trademarks
`382Tll Marks Protected
`
`382Tkl028 Indication of Origin or Ownership;
`Identification
`
`Trademarks identify the source of a product,
`and are often closely associated with the actual
`
`product.
`
`Cases that cite this headnote
`
`l27l
`
`Constitutional Law
`
`Trademarks and Trade Names
`
`Trademarks
`
`Registration
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`92XVIll(C) Trade or Business
`92kl604 Trademarks and Trade Names
`382T Trademarks
`
`382TVll Registration
`382TVll(A)
`In General
`382Tkl230 In General
`
`Trademark registration and the accoutrements
`of registration, such as the registrant's right to
`
`attach the ® symbol to the registered mark, the
`mark's placement on the Principal Register, and
`the issuance of a certificate of registration, did
`not render trademark registration government
`
`trademark registration
`speech, as would put
`outside the coverage of the First Amendment,
`where trademark registration was a regulatory
`activity, registered trademarks were not created,
`
`owned, or monopolized by the government,
`and the public was unlikely to believe that
`trademark registration constituted government
`endorsement
`or
`conveyed
`a
`government
`
`message. U.S.C.A. Const.Amend.
`Act, § 2(a). l5 U.S.C.A. § l052(a).
`
`1; Lanham
`
`Cases that cite this headnote
`
`I23]
`
`Constitutional Law
`Denial of Benefits
`
`92 Constitutional Law
`
`92XVIII Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlIl(A)
`In General
`92XVIII(A)l
`92kl50l Denial of Benefits
`
`A denial of an otherwise-available benefit
`
`is unconstitutional where it has a significant
`chilling effect on private speech. U.S.C.A.
`Const.Amend. l.
`
`Cases that cite this headnote
`
`l29l
`
`Constitutional Law
`
`Denial of Benefits as Constitutional
`Violation
`
`Constitutional Law
`Denial of Benefits
`
`92 Constitutional Law
`
`92Vll Constitutional Rights in General
`92Vll(A)
`In General
`92kl058 Denial of Benefits as Constitutional
`Violation
`92 Constitutional Law
`
`92XVIII Freedom of Speech, Expression, and
`Press
`
`In General
`92XVlll(A)
`In General
`92XVlll(A)l
`92kl50l Denial of Benefits
`
`Under the unconstitutional conditions doctrine,
`
`even though a person has no right to a valuable
`
`governmental benefit and even though the
`
`government may deny him the benefit for any
`number of reasons, there are some reasons upon
`
`it may
`which the government may not rely;
`not deny a benefit to a person on a basis that
`infringes his constitutionally protected interests,
`
`in freedom of speech.
`especially his interest
`U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnote
`
`I30]
`
`United States
`
`..~ Recipients, Terms, and Conditions in
`General
`
`393 United States
`
`393l Status, Powers, and Functions in General
`393l(G) Fiscal Matters
`393k3l2 Spending
`393k3l4 Recipients, Temis, and Conditions in
`General
`
`

`
`In re Tani.
`
`F.3d ---- (2015)
`
`393k3l4(l)
`
`In General
`
`Spending Clause. which grants Congress the
`
`power to lay and collect taxes, duties, imposts,
`and excises to pay the debts and provide for
`
`the common defence and general welfare of
`the United States, provides Congress broad
`discretion to tax and spend for the general
`welfare, including by funding particular state or
`private programs or activities. U.S.C.A. Const.
`Art. I, § 8, cl. l.
`
`Cases that cite this headnote
`
`[31]
`
`United States
`
`Recipients, Tenns, and Conditions in
`General
`
`393 United States
`
`393] Status, Powers, and Functions in General
`393l(G) Fiscal Matters
`393k3l2 Spending
`393k3 I4 Recipients, Terms, and Conditions in
`General
`
`393k3l4(l)
`
`In General
`
`The broad discretion granted to Congress under
`
`the Spending Clause includes the authority to
`
`impose limits on the use of such funds to ensure
`they are used in the manner Congress intends,
`even when these limits exclude protected speech
`or other constitutionally protected conduct.
`U.S.C.A. Const. Art. I, § 8, cl. 1.
`
`Cases that cite this headnote
`
`l32|
`
`United States
`
`Recipients, Tenns. and Conditions in
`General
`
`393 United States
`
`393l Status, Powers, and Functions in General
`393l(G) Fiscal Matters
`393k3|2 Spending
`393k3l4 Recipients. Tennis, and Conditions in
`General
`
`393k3l4(l)
`
`In General
`
`When the Government appropriates public funds
`to establish a program, it is entitled under the
`Spending Clause to define the limits of that
`program. U.S.C.A. Const. Art. I, § 8, cl. 1.
`
`Cases that cite this headnote
`
`I331
`
`Constitutional Law
`
`Government Funding
`United States
`
`» Recipients, Terms, and Conditions in
`General
`
`92 Constitutional Law
`
`92XVIII Freedom of Speech, Expression, and
`Press
`
`In General
`92XVIll(A)
`92XVlII(A)3 Particular Issues and Applications
`in General
`
`92k l 571 Government Funding
`393 United States
`
`3931 Status, Powers. and Functions in General
`393l(G) Fiscal Matters
`393k3 I2 Spending
`393k3 14 Recipients, Terms, and Conditions in
`General
`
`393k3l4(l)
`
`In General
`
`Viewpoint-based funding decisions can be
`sustained under
`the Spending Clause and
`First Amendment
`in instances in which the
`
`government used private speakers to transmit
`specific information pertaining to its own
`program. U.S.C.A. Const. Art. 1, § 8, cl.
`l;
`U.S.C.A. Const.Amend. l.
`
`Cases that cite this headnote
`
`[34]
`
`United States
`
`- Recipients, Tenns, and Conditions in
`.
`General
`
`393 United States
`
`393! Status, Powers, and Functions in General
`393l(G) Fiscal Matters
`393k3l2 Spending
`393k3 l4 Recipients, Terms, and Conditions in
`General
`
`393k3 l4(l) In General
`
`If a program arises under the Spending Clause,
`
`Congress is free to attach conditions that define
`the limits of the government spending program
`—those that specify the activities Congress
`wants to subsidize; however, Congress does not
`have the authority to attach conditions that seek
`to leverage funding to regulate speech outside the
`contours of the program itself. U.S.C.A. Const.
`Art. 1, § 8, cl. 1.
`
`

`
`in re Tam.
`
`F.3d
`
`(2015)
`
`Cases that cite this headnote
`
`I35]
`
`Constitutional Law
`
`Government Funding
`United States
`
`Recipients, Terms, and Conditions in
`General
`
`92 Constitutional Law
`
`92XVlil Freedom ofspcech. Expression, and
`Press
`
`In General
`92XVlll(A)
`92XVlll(A)3 Particular Issues and Applications
`in General
`
`92kl5'Il Government Funding
`393 United States
`
`393l Status. Powers, and Functions in General
`393I(G) Fiscal Matters
`393k3l2 Spending
`393k3 l4 Recipients. Terms. and Conditions in
`General
`
`393k3l4(l)
`
`In General
`
`Congress cannot recast a condition on funding
`as a mere definition of its program under the
`
`Spending Clause in every case. lest the First
`Amendment be reduced to a simple semantic
`exercise. U.S.C.A. Const. Art. I, § 8, cl. 1;
`U.S.C.A. Const.Amend. 1.
`
`Cases that cite this headnotc
`
`[36]
`
`Constitutional Law
`Trademarks and Trade Names
`
`Trademarks
`
`Validity
`92 Constitutional Law
`
`92XVllI Freedom of Speech, Expression, and
`Press
`
`92XVlll(C) Trade or Business
`92k I604 Trademarks and Trade Names
`382T Trademarks
`
`382TVll Registration
`382TVll(A)
`In General
`382Tk I 23l Constitutional and Statutory
`Provisions
`
`382Tkl234 Validity
`
`The registration of trademarks was not a part of
`government subsidy program, as would exempt
`the Lanham Act's prohibition on the registration
`of disparaging trademarks from strict scrutiny
`
`review under the First Amendment free speech
`clause, even though some federal funds were
`
`spent to cover employee benefits for employees
`of the United States Patent and Trademark
`
`Office (PTO), where trademark registration did
`not implicate Congress's power to spend or to
`control use of government property, the benefits
`
`of trademark registration were not monetary,
`the registration fee paid by applicants covered
`
`all of the operating expenses associated with
`registering marks, and the purpose of trademark
`registration under
`the Lanham Act was to
`regulate marks used in interstate commerce,
`prevent customer confusion, and protect
`the
`goodwill of markholders, not
`to subsidize
`markholdcrs. U.S.C.A. Const. Art. 1, § 8, cl. l;
`U.S.C.A. Const.Amend. I; Lanham Act, § 2(a),
`I5 U.S.C.A. § l052(a); Lanham Trade-Mark
`
`Act, § 45, I5 U.S.C.A. § 1127.
`
`Cases that cite this headnote
`
`l37I
`
`Constitutional Law
`.— Trademarks and Trade Names
`
`Trademarks
`
`.~ Validity
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`92XVlll(C) Trade or Business
`92kl604 Trademarks and Trade Names
`382T Trademarks
`
`382TVII Registration
`382TVll(A)
`In General
`382Tkl 23l Constitutional and Statutory
`Provisions
`
`382Tkl234 Validity
`
`Even
`
`assuming
`
`that
`
`the Lanham Act's
`
`prohibition on the registration of disparaging
`trademarks was treated as a regulation of
`commercial speech, instead of subject to strict
`scrutiny under
`the First Amendment,
`the
`government
`lacked a substantial government
`
`for prohibiting disparaging marks,
`interest
`despite contention that
`the government was
`entitled to disassociate itself from disparaging ,
`trademarks and avoid spending government
`resources to facilitate the use of disparaging
`trademarks, where the disparagement provision
`
`

`
`ln ft: Tam. --- F.3d <--- (2015)
`
`did not address misleading, deceptive, or
`unlawful marks, trademarks were not reasonably
`attributable to the government by the public,
`and trademark registration was user-funded.
`U.S.C.A. Const.Amend. l; Lanham Act, § 2(a),
`l5 U.S.C.A. § l052(a).
`
`Cases that cite this headnote
`
`|38|
`
`Constitutional Law
`
`Reasonablencss; Relationship to
`Governmental Interest
`
`92 Constitutional Law
`
`92XVlll Freedom of Spéech. Expression, and
`Press
`
`In General
`92XVlll(A)
`92XVlII(A)2 Commercial Speech in General
`92kl54l Reasonablenessg Relationship to
`Governmental Interest
`
`lawful
`speech concems
`When commercial
`activity and is not misleading,
`the asserted
`
`governmental interest must be substantial, and
`the regulation of the speech must directly and
`
`materially advance the government's asserted
`interest and be narrowly tailored to achieve that
`
`objective under the First Amendment. U.S.C.A.
`Const.Amend. 1.
`
`Cases that cite this headnote
`
`I39]
`
`Constitutional Law
`
`Freedom of Speech, Expression, and Press
`92 Constitutional Law
`92Vl Enforcement of Constitutional Provisions
`
`92Vl(C) Dctennination of Constitutional
`Questions
`92Vl(C)4 Burden of Proof
`92kl032 Particular Issues and Applications
`92kl038 Freedom ofspeech, Expression, and
`Press
`
`is the
`it
`Under a commercial speech inquiry,
`State's burden to justify its content-based law as
`consistent with the First Amendment. U.S.C.A.
`
`Const.Amend. 1.
`
`Cases that cite this headnote
`
`l40l
`
`Constitutional Law
`
`Hr}-'.
`
`Offensive, Vulgar, Abusive, or Insulting
`Speech
`92 Constitutional Law
`
`92XVlll Freedom of Speech, Expression, and
`Press
`
`92XVlll(A)
`
`In General
`
`92XVlll(A)3 Particular Issues and Applications
`in General
`
`92klS59 Offensive. Vulgar, Abusive. or Insulting
`Speech
`
`In public debate, insulting and even outrageous
`speech must be tolerated in order to provide
`
`freedoms
`adequate breathing space to the
`protected by the First Amendment. U.S.C.A.
`Const.Amend. l.
`
`Cases that cite this headnote
`
`West Cudenotes
`
`Held Unconstitutional
`
`I5 U.S.C.A. § l052(a).
`
`Appeal from the United States Patent and Trademark Office,
`
`Trademark Trial and Appeal Board in No. 85/472,044.
`
`Attorneys and Law Firms
`
`Ronald D. Coleman, Archer & Greiner, P.C., Hackensack,
`
`NJ, argued for appellant. Also represented by Joel Geoffrey
`MacMull; John C. Connell, Haddonfteld, NJ; Darth M.
`
`Newman, Martin Law Firm LLC, Pittsburgh, PA.
`
`Daniel Tenny, Appellate Staff, Civil Division, United States
`Department of Justice, Washington, DC, argued for appellee
`
`Michelle K. Lee. Also represented by Benjamin C. Mizer,
`Mark R. Freeman, Joshua Marc Salzman; Nathan K. Kelley,
`
`Thomas W. Krause, Molly R. Silfen, Christina Hieber,
`
`Thomas L. Casagrandc, Officc of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA.
`
`Lee Rowland, Speech, Privacy & Technology, American
`Civil Liberties Union Foundation, New York. NY. argued
`for amici curiae American Civil Liberties Union, American
`
`Civil Liberties Union of Oregon, American Civil Liberties
`Union of the National Capital Area. Also represented by
`Esha Bhandari, Brett Max Kaufman; Arthur B. Spitzer,
`
`American Civil Liberties Union of the National Capital Area,
`
`

`
`1.71!" ium. -—- F.3d
`
`(2015)
`
`Washington, DC; Mathew W. Dos Santos. ACLU of Oregon,
`Portland, OR.
`
`Opinion
`
`Jeffrey Joseph Lopez, Drinker Biddle & Reath LLP,
`Washington, DC.
`for amici curiae Amanda Blackhorse,
`Marcus Briggs—Cloud, Phillip Gover,
`Jillian Pappan.
`
`Courtney Tsotigh. Also represented by Jesse A. Wittcn.
`
`Megan Lcef Brown, Wiley Rein, LLP, Washington, DC,
`for amici curiae Cato Institute, The Rutherford Institute.
`
`Also represented by Christopher J. Kelly. Joshua S. Tumer,
`Jennifer L. Elgin, Dwayne D. Sam; Cato Institute also
`
`represented by llya Shapiro, Cato Institute, Washington DC;
`The Rutherford Institute also represented by Douglas R.
`McKusick, John W. Whitehead, Charlottesville, VA.
`
`Marc J. Randazza, Randazza Legal Group, Las Vegas, NV,
`for amicus curiae First Amendment Lawyers Association.
`
`Also represented by Ronald D. Green, Jr.
`
`Charanjit Brahma, Troutman Sanders LLP, San Francisco,
`CA, for amici curiae Fred T. Korematsu Center for Law and
`
`Equality, National Asian Pacific American Bar Association,
`South Asian Bar Association of Washington, DC. National
`Asian Pacific American Bar Association also represented by
`
`GEORGE C. CHEN, Bryan Cave LLP, Phoenix, AZ.
`
`Hugh C. Hansen, Fordham University School of Law, New
`York, NY. as amicus cu