throbber
United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: SIMON SHIAO TAM,
`Appellant
`______________________
`
`2014-1203
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 85472044.
`______________________
`
`Decided: April 20, 2015
`______________________
`
`RONALD D. COLEMAN, Goetz Fitzpatrick PLLC, New
`York, NY, argued for appellant. Also represented by JOEL
`GEOFFREY MACMULL.
`
`MOLLY R. SILFEN, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, argued for
`appellee Michelle K. Lee. Also represented by CHRISTINA
`HIEBER, THOMAS L. CASAGRANDE, NATHAN K. KELLEY.
`______________________
`Before LOURIE, MOORE, and O’MALLEY, Circuit Judges.
`MOORE, Circuit Judge.
`Simon Shiao Tam appeals from the decision of the
`Trademark Trial and Appeal Board (the Board) affirming
`the examining attorney’s refusal to register the mark
`THE SLANTS because it is disparaging. We affirm.
`
`

`
`2
`
`
`
` IN RE TAM
`
`BACKGROUND
`Mr. Tam is the “front man” for Asian-American dance
`rock band The Slants. In 2010, Mr. Tam filed Application
`No. 77/952,263 (’263 application) seeking to register the
`mark THE SLANTS for “Entertainment, namely, live
`performances by a musical band.” Mr. Tam attached
`specimens featuring the band name set against Asian
`motifs to the ’263 application. The examining attorney
`found the mark disparaging to people of Asian descent
`under 15 U.S.C. § 1052(a) (“§ 2(a)”) and therefore refused
`to register it. Mr. Tam appealed that refusal to the
`Board, but the case was dismissed for failure to file a brief
`and the application was deemed abandoned. On Novem-
`ber 14, 2011, six days after the abandonment of the ’263
`application, Mr. Tam filed a second application (Applica-
`tion No. 85/472,044, or the ’044 application) seeking to
`register the mark THE SLANTS for essentially identical
`services as in the ’263 application. In the ’044 applica-
`tion, Mr. Tam claims use of the mark since 2006. Unlike
`the specimens attached to the ’263 application, the speci-
`mens attached to the ’044 application do not contain
`Asian motifs. The examining attorney again found the
`mark THE SLANTS disparaging and declined to register
`it. In making this determination, the examining attorney
`cited to materials that he had gathered in response to Mr.
`Tam’s earlier application. Mr. Tam responded and a final
`office action issued.
`The Board affirmed the examining attorney’s refusal
`to register the mark. The Board found that “it is abun-
`dantly clear
`from the record not only that THE
`SLANTS . . . would have the ‘likely meaning’ of people of
`Asian descent but also that such meaning has been so
`perceived and has prompted significant responses by
`prospective attendees or hosts of the band’s performanc-
`es.” In re Tam, No. 85472044, 2013 WL 5498164, at *5
`(TTAB Sept. 26, 2013). To support this conclusion, the
`Board pointed to the band’s website, which displayed the
`
`

`
`IN RE TAM
`
`3
`
`mark next to “a depiction of an Asian woman, utilizing
`rising sun imagery and using a stylized dragon image,”
`and to a statement by Mr. Tam that he selected the mark
`in order to “own” the stereotype it represents. Tam, 2013
`WL 5498164, at *5. The Board also found that the mark
`is disparaging to a substantial component of people of
`Asian descent because “[t]he dictionary definitions, refer-
`ence works, and all other evidence unanimously catego-
`rize the word ‘slant,’ when meaning a person of Asian
`descent, as disparaging,” and because there was record
`evidence of individuals and groups in the Asian communi-
`ty objecting to Mr. Tam’s use of the word “slant.” Tam,
`2013 WL 5498164, at *7. The Board therefore disquali-
`fied the mark for registration under § 2(a). Mr. Tam
`appeals.
` We have
`jurisdiction under 28 U.S.C.
`§ 1295(a)(4).
`
`DISCUSSION
`Mr. Tam argues that the Board erred in finding the
`mark THE SLANTS disparaging under § 2(a) of the
`Lanham Act and therefore unregistrable. Mr. Tam also
`challenges the constitutionality of § 2(a).
`I. Disparagement Analysis
`Section 2(a) of the Lanham Act provides that the Pa-
`tent and Trademark Office (PTO) may refuse to register a
`trademark that “[c]onsists of or comprises immoral,
`deceptive, or scandalous matter; or matter which may
`disparage or falsely suggest a connection with persons,
`living or dead, institutions, beliefs, or national symbols, or
`bring them into contempt, or disrepute.” 15 U.S.C.
`§ 1052(a). A disparaging mark “‘dishonors by comparison
`with what is inferior, slights, deprecates, degrades, or
`affects or injures by unjust comparison.’” In re Geller, 751
`F.3d 1355, 1358 (Fed. Cir. 2014) (quoting Pro-Football,
`Inc. v. Harjo, 284 F. Supp. 2d 96, 124 (D.D.C. 2003))
`
`

`
`4
`
`
`
` IN RE TAM
`
`(alterations omitted). In Geller, we applied a two-part
`test to determine if a mark may be disparaging:
`(1) what is the likely meaning of the matter in
`question, taking into account not only dictionary
`definitions, but also the relationship of the matter
`to the other elements in the mark, the nature of
`the goods or services, and the manner in which
`the mark is used in the marketplace in connection
`with the goods or services; and
`(2) if that meaning is found to refer to identifiable
`persons, institutions, beliefs or national symbols,
`whether that meaning may be disparaging to a
`substantial composite of the referenced group.
`Id. This determination is “a conclusion of law based upon
`underlying factual inquiries.” Id. We review the Board’s
`factual findings for substantial evidence, and its ultimate
`conclusion de novo. Id.
`A. Use of Prior Applications
`As a threshold matter, Mr. Tam argues that the exam-
`ining attorney and the Board should not have considered
`evidence gathered by the examining attorney while eval-
`uating the earlier ’263 application. We disagree. The
`examining attorney may look to evidence outside the
`application, such as dictionary definitions and newspaper
`articles, when determining the “manner of use” of the
`mark. See In re Bayer Aktiengesellschaft, 488 F.3d 960,
`966–69 (Fed. Cir. 2007). Mr. Tam claims use of the mark
`THE SLANTS back to 2006, before he filed the ’263
`application. Evidence gathered in response to the ’263
`application is relevant to determining the mark’s manner
`of use for the time period during which Mr. Tam asserts
`the mark was in use. While the evidence gathered during
`the evaluation of the ’263 application derives from an
`abandoned application dated before the ’044 application’s
`filing date, its use was not improper.
`
`

`
`IN RE TAM
`
`5
`
`B. Likely Meaning
`To determine if a mark is disparaging, we first con-
`sider “the likely meaning of the matter in question.”
`Geller, 751 F.3d at 1358. The Board found that the mark
`THE SLANTS refers to people of Asian descent. Substan-
`tial evidence supports this finding. Mr. Tam argues that
`the mark does not refer to people of Asian descent. His
`argument seems to rely on 1) the fact that the term
`“slant” has a number of alternative, more common mean-
`ings; 2) that none of the specimens attached to the ’044
`application include Asian imagery or otherwise reference
`people of Asian descent; and 3) that the PTO has granted
`a number of unrelated trademark applications containing
`the term “slant.” We are not persuaded by Mr. Tam’s
`argument.
`There is no dispute that the term “slants” has a num-
`ber of meanings, one of which refers to people of Asian
`descent. The Board cited a number of traditional and
`slang dictionaries defining the word with reference to
`people of Asian descent, ranging from Oxford Reference
`Online to www.urbandictionary.com. Tam, 2013 WL
`5498164, at *1–2 & n.3. Even the dictionary entries
`supplied by Mr. Tam include as possible definitions for
`the term “slant” “a disparaging term for a person of East
`Asian birth or ancestry,” J.A. 219 (The American Heritage
`Dictionary of the English Language), and “[a] person with
`slanting eyes, spec. one of Oriental descent,” J.A. 234–36
`(Oxford English Dictionary).
`The fact that the term “slants” has some innocuous
`meanings—and that some trademarks have issued with
`those innocuous meanings—does not foreclose the possi-
`bility that the term may also be used in an offensive
`manner, even when the non-disparaging meanings are
`more common. See Tam, 2013 WL 5498164, at *5. Ra-
`ther, the existence of these other meanings makes it
`necessary to examine how the applicant uses the mark in
`
`

`
`6
`
`
`
` IN RE TAM
`
`the marketplace to determine its likely meaning—as the
`Board did.
`The evidence here supports the Board’s finding that
`the mark THE SLANTS likely refers to people of Asian
`descent. For example, an article in the record includes a
`quote attributed to Mr. Tam where he describes the
`genesis of the band’s name by explaining: “I was trying to
`think of things that people associate with Asians. Obvi-
`ously, one of the first things people say is that we have
`slanted eyes. . . .” J.A. 130. The record also contains the
`band’s entry in Wikipedia, which states that the band’s
`name is “derived from an ethnic slur for Asians.” J.A. 57.
`The Wikipedia entry quotes Mr. Tam: “We want to take
`on these stereotypes that people have about us, like the
`slanted eyes, and own them. We’re very proud of being
`Asian—we’re not going to hide that fact. The reaction
`from the Asian community has been positive.” Id. Fur-
`thermore, the record includes an image from the band’s
`website in which the mark THE SLANTS is set against “a
`depiction of an Asian woman, utilizing rising sun imagery
`and using a stylized dragon image,” as described by the
`Board. Tam, 2013 WL 5498164, at *2, 5 (citing J.A. 59).
`Finally, the record includes evidence that both individuals
`and Asian groups have perceived the term as referring to
`people of Asian descent. Tam, 2013 WL 5498164, at *2–3
`(citing, e.g., J.A. 95 (“[Mr. Tam] was initially slated to
`give the keynote address at the 2009 Asian American
`Youth Leadership Conference in Portland. But some
`conference supporters and attendees felt the name of the
`band was offensive and racist, and out of respect for these
`opinions the conference organizers decided to choose
`someone less controversial.”)). On this record, we find
`that substantial evidence supports the Board’s determina-
`tion that the mark THE SLANTS likely refers to people of
`Asian descent.
`
`

`
`IN RE TAM
`
`7
`
`Mr. Tam also argues that we should not consider this
`evidence because it is unauthenticated hearsay and does
`not satisfy the requirements of 37 C.F.R. § 2.122(a), which
`applies the Federal Rules of Evidence to inter partes
`proceedings. However, § 2.122(a) does not apply to ex
`parte proceedings. For ex parte proceedings, the Board
`has adopted a “somewhat more permissive stance with
`respect to the admissibility and probative value of evi-
`dence.” TRADEMARK TRIAL & APPEAL BOARD MANUAL OF
`PROCEDURE § 1208. In ex parte proceedings, the Board
`permits the examining attorney to consider Internet
`material. Id. § 1208.03. We see no error in the Board’s
`procedures.
`C. Whether the Meaning May Be Disparaging to a Sub-
`stantial Composite of the Referenced Group
`If the likely meaning of the mark “is found to refer to
`identifiable persons, institutions, beliefs or national
`symbols,” we next consider “whether that meaning may
`be disparaging to a substantial composite of the refer-
`enced group.” Geller, 751 F.3d at 1360. Substantial
`evidence supports the Board’s finding that the mark THE
`SLANTS is likely offensive to a substantial composite of
`people of Asian descent.
`First, the definitions in evidence universally charac-
`terize the word “slant” as disparaging, offensive, or an
`ethnic slur when used to refer to a person of Asian de-
`scent. Tam, 2013 WL 5498164, at *1–2, 7 & n.3. This
`includes the dictionaries provided by Mr. Tam in his
`response to office action. J.A. 219, 234–36. Additionally,
`the record includes a brochure published by the Japanese
`American Citizens League describing the term “slant,”
`when used to refer to people of Asian descent, as a “de-
`rogatory term” that is “demeaning” and “cripple[s] the
`spirit.” J.A. 48–49. The record also includes news articles
`and blog posts discussing the offensive nature of the
`
`

`
`8
`
`
`
` IN RE TAM
`
`band’s name, which led to the cancellation of the band’s
`scheduled performance at a conference for Asian youth.
`Tam, 2013 WL 5498164, at *2–3 (citing J.A. 45, 51, 94–98,
`100). We find there is substantial evidence—even without
`a marketing survey or some other quantitative measure of
`the term’s offensiveness—supporting the Board’s finding
`that the mark is disparaging to a substantial composite of
`people of Asian descent. The Board does not have the
`resources, nor is it required, to conduct a marketing
`survey each time it evaluates whether a term is disparag-
`ing. See In re Loew’s Theatres, Inc., 769 F.2d 764, 768
`(Fed. Cir. 1985).
`II. Constitutionality of § 2(a)
`Having affirmed the Board’s holding that the mark is
`disparaging, we next turn to Mr. Tam’s constitutional
`challenges.
`
`A. First Amendment
`Mr. Tam argues that the Lanham Act’s restrictions on
`disparaging trademarks are unconstitutional under the
`First Amendment both facially and as applied to his case
`because § 2(a) conditions a benefit—trademark registra-
`tion—on the relinquishment of speech. This argument is
`foreclosed by our precedent. In In re McGinley, our prede-
`cessor court wrote:
`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, appel-
`lant’s First Amendment rights would not be
`abridged by the refusal to register his mark.
`660 F.2d 481, 484 (C.C.P.A. 1981). In subsequent cases,
`we have accepted this reasoning. In re Boulevard Entm’t,
`Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (“[T]he refusal
`
`

`
`IN RE TAM
`
`9
`
`to register a mark does not proscribe any conduct or
`suppress any form of expression because it does not affect
`the applicant’s right to use the mark in question.”); In re
`Mavety Media Grp., 33 F.3d 1367, 1374 (Fed. Cir. 1994);
`see also In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012)
`(“Because a refusal to register a mark has no bearing on
`the applicant’s ability to use the mark, we have held that
`§ 1052(a) does not implicate the First Amendment rights
`of trademark applicants.”). We here follow our precedent.
`B. Vagueness
`Mr. Tam also argues that the disparagement standard
`of § 2(a) is unconstitutionally vague. He claims that key
`terms of § 2(a), such as “scandalous” and “disparage,” are
`not “clearly defined” and are necessarily subjective. He
`argues that § 2(a) therefore does not give “the person of
`ordinary intelligence a reasonable opportunity to know
`what is prohibited.” Grayned v. City of Rockford, 408 U.S.
`104, 108 (1972).
`We have noted with respect to § 2(a)’s bar on scandal-
`ous subject matter the “inherent difficulty in fashioning a
`single objective measure like a substantial composite of
`the general public from the myriad of subjective view-
`points.” Mavety, 33 F.3d at 1371. Nonetheless, we found
`the standard “sufficiently precise to enable the PTO and
`the courts to apply the law fairly and to notify a would-be
`registrant that the mark he adopts will not be granted a
`federal registration.” McGinley, 660 F.2d at 485. The
`same is true for the bar on disparaging marks. The Board
`follows a well-established two-part test to determine if a
`mark is disparaging. See Geller, 751 F.3d at 1358. This
`standard is not unconstitutionally vague.
`C. Due Process
`Mr. Tam argues that the PTO applies the disparage-
`ment provisions arbitrarily and without clear guidelines.
`He points to registered trademarks containing slurs
`
`

`
`10
`
`
`
` IN RE TAM
`
`against homosexuals such as DYKES ON BIKES, U.S.
`Registration No. 3323803, as evidence of the arbitrary
`nature of trademark adjudication.
`We have rejected similar due process challenges to
`§ 2(a). In both Boulevard Entertainment, 334 F.3d at
`1343, and In re Shinnecock Smoke Shop, 571 F.3d 1171,
`1174 (Fed. Cir. 2009), the applicant argued that by refus-
`ing to register his mark while granting similar marks, the
`PTO had violated the Due Process clause. In these cases,
`we found no due process violation because the applicant
`“was provided a full opportunity to prosecute his applica-
`tions and to appeal the examining attorney’s final rejec-
`tions to the Board.” 571 F.3d at 1174. The same is true
`here. We also noted that “allegations regarding similar
`marks are irrelevant because each application must be
`considered on its own merits.” Id. (citing Boulevard
`Entm’t, 334 F.3d at 1343). Furthermore, “[e]ven if all of
`the third-party registrations should have been refused
`registration under [§ 2(a)], such errors do not bind the
`USPTO to improperly register [the a]pplicant’s marks.”
`Id. (citing Boulevard Entm’t, 334 F.3d at 1343). This
`reasoning compels us to reject Mr. Tam’s due process
`argument.
`
`D. Equal Protection
`Lastly, Mr. Tam argues that because the examining
`attorney’s disparagement analysis hinged on his and his
`bandmates’ ethnic identities, the rejection of the mark
`violated the equal protection clause. To support this
`argument, Mr. Tam points to the Final Office Action,
`which states:
`Here, the evidence is uncontested that applicant
`is a founding member of a band (The Slants) that
`is self described as being composed of members of
`Asian descent. . . . Thus, the association of the
`term SLANTS with those of Asian descent is evi-
`
`

`
`IN RE TAM
`
`11
`
`denced by how the applicant uses the Mark – as
`the name of an all Asian-American band.
`J.A. 244. Mr. Tam argues the examining attorney’s race-
`based determination is neither justified by a compelling
`government
`interest nor narrowly tailored towards
`achieving that goal.
`We reject Mr. Tam’s equal protection argument. The
`record shows that the Board denied Mr. Tam the registra-
`tion because he used the mark THE SLANTS in a dispar-
`aging manner, not on account of his race. The Board
`wrote that “[a]n application by a band comprised of non-
`Asian-Americans called THE SLANTS that displayed the
`mark next to the imagery used by applicant . . . would
`also be subject to a refusal under Section 2(a).” Tam,
`2013 WL 5498164, at *6. Furthermore, we have held that
`a trademark refusal does not violate equal protection so
`long as there are nondiscriminatory reasons for denying
`registration. Shinnecock Smoke Shop, 571 F.3d at 1175.
`Here there are nondiscriminatory reasons for denying Mr.
`Tam’s application.
`
`CONCLUSION
`We affirm the Board’s decision affirming the examin-
`ing attorney’s refusal to register the mark THE SLANTS
`because it is disparaging.
`AFFIRMED
`
`

`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: SIMON SHIAO TAM,
`Appellant
`______________________
`
`2014-1203
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 85472044.
`______________________
`MOORE, Circuit Judge, additional views.
`It is time for this Court to revisit McGinley’s holding
`on the constitutionality of § 2(a) of the Lanham Act.
`Under § 2(a), the PTO may refuse to register immoral,
`scandalous, or disparaging marks. 15 U.S.C. § 1052(a).
`In In re McGinley, our predecessor court held without
`citation to any legal authority in just a few sentences that
`§ 2(a) does not implicate the First Amendment:
`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, appel-
`lant’s First Amendment rights would not be
`abridged by the refusal to register his mark.
`
`

`
`2
`
`
`
` IN RE TAM
`
`660 F.2d 481, 484 (C.C.P.A. 1981). More than thirty years
`have passed since McGinley, and in that time both the
`McGinley decision and our reliance on it have been widely
`criticized.1 Furthermore, First Amendment jurisprudence
`
`1 See, e.g., Ritchie v. Simpson, 170 F.3d 1092, 1103
`& n.1 (Fed. Cir. 1999) (Newman, J., dissenting); Pro-
`Football Inc. v. Harjo, No. 99-1385 (CKK), 2000 WL
`1923326, at *4 (D.D.C. Dec. 11, 2000); Stephen Baird,
`Moral Intervention in the Trademark Arena: Banning the
`Registration of Scandalous and Immoral Trademarks, 83
`TRADEMARK REPORTER 661, 685–86 (1993); Justin G.
`Blankenship, The Cancellation of Redskins as a Disparag-
`ing Trademark: Is Federal Trademark Law an Appropri-
`ate Solution for Words That Offend?, 72 U. COLO. L. REV.
`415, 443–44 (2001); Terence Dougherty, Group Rights to
`Cultural Survival: Intellectual Property Rights in Native
`American Cultural Symbols, 29 COLUM. HUM. RTS. L. REV.
`355, 383 (1998); Bruce C. Kelber, “Scalping the Redskins:”
`Can Trademark Law Start Athletic Teams Bearing Native
`American Nicknames and Images on the Road to Racial
`Reform?, 17 HAMLINE L. REV. 533, 556 (1994); Paul Ku-
`ruk, Goading a Reluctant Dinosaur: Mutual Recognition
`Agreements as a Policy Response to the Misappropriation
`of Foreign Traditional Knowledge in the United States, 34
`PEPP. L. REV. 629, 662 n.209 (2007); Michelle B. Lee,
`Section 2(a) of the Lanham Act as a Restriction on Sports
`Team Names: Has Political Correctness Gone Too Far?, 4
`SPORTS LAW J. 65, 66–67 (1997); Jeffrey Lefstin, Does the
`First Amendment Bar Cancellation of Redskins?, 52 STAN.
`L. REV. 665, 676–77 (2000); Nell Jessup Newton, Memory
`and Misrepresentation: Representing Crazy Horse, 27
`CONN. L. REV. 1003, 1030 n.109 (1995); Ron Phillips, A
`Case for Scandal and Immorality: Proposing Thin Protec-
`tion of Controversial Trademarks, 17 U. BALT. INTELL.
`PROP. L.J. 55, 67–68 (2008); Jendi Reiter, Redskins and
`
`
`

`
`IN RE TAM
`
`3
`
`on the “unconstitutional conditions” doctrine and the
`protection accorded to commercial speech has evolved
`significantly since the McGinley decision. In 1991, the
`source of the PTO’s funding shifted from the taxpayers to
`application fees. The constitutionality of § 2(a) is an
`important and timely issue that raises a number of con-
`stitutional questions. The time has come to give this
`issue the consideration it is due.
`There are three requirements for finding a violation of
`the First Amendment. The speech at issue must be
`protected speech. See, e.g., Roth v. United States, 354
`U.S. 476 (1957) (obscenity is not protected by the First
`Amendment); Gertz v. Robert Welch, Inc., 418 U.S. 323
`(1974) (defamation under certain circumstances is not
`protected by the First Amendment); Chaplinsky v. New
`Hampshire, 315 U.S. 568 (1942) (“fighting words” are not
`protected by the First Amendment); see also R.A.V. v. City
`of St. Paul, 505 U.S. 377, 382–83 (1992) (“‘[T]he freedom
`of speech’ referred to by the First Amendment does not
`include a freedom to disregard these traditional limita-
`tions.”); United States v. Alvarez, 132 S. Ct. 2537, 2543–44
`(2012) (plurality opinion). There must be government
`action that abridges that speech in a manner that impli-
`cates the First Amendment, as, for example, when the
`government bans flag-burning, Texas v. Johnson, 491 U.S.
`397, 405 (1989), or imposes taxes on certain publications,
`Ark. Writers’ Project, Inc. v. Ragland, 481 U.S. 221, 229–
`30 (1987). And the abridgement must be unconstitutional
`when analyzed under the appropriate framework—for
`
`
`Scarlet Letters: Why “Immoral” and “Scandalous” Trade-
`marks Should Be Federally Registrable, 6 FED. CIR. BAR.
`J. 191, 197 (1996); Lilit Voskanyan, The Trademark
`Principal Register as a Nonpublic Forum, 75 U. CHI. L.
`REV. 1295, 1302 (2008).
`
`

`
`4
`
`
`
` IN RE TAM
`
`example, the Central Hudson four-part test for determin-
`ing the constitutionality of restrictions on commercial
`speech. Cent. Hudson Gas & Elec. Corp. v. Pub. Serv.
`Comm’n, 447 U.S. 557, 566 (1980).
`Are Trade Names Protected Speech?
`I.
`For many years, commercial speech lay outside the
`ambit of the First Amendment. In 1975, the Supreme
`Court ruled that the First Amendment protects commer-
`cial speech, Bigelow v. Virginia, 421 U.S. 809, 818 (1975),
`and five years later the Supreme Court laid out the four-
`part test for determining the constitutionality of re-
`strictions on commercial speech, Central Hudson, 447
`U.S. at 566.
`Today, however, it is unquestionably true that trade-
`marks are protected speech under Supreme Court com-
`mercial speech jurisprudence. Commercial speech is the
`“dissemination of information as to who is producing and
`selling what product, for what reason, and at what price.”
`Va. State Bd. of Pharmacy v. Va. Citizens Consumer
`Council, Inc., 425 U.S. 748, 765 (1976). Protecting the
`flow of this type of information is “indispensable.” Id.
`Four years after Bigelow, the Supreme Court held that
`the trade name of an optometrist is commercial speech.
`Friedman v. Rogers, 440 U.S. 1, 11 (1979) (“The use of
`trade names in connection with optometrical practice,
`then, is a form of commercial speech and nothing more.”).
`Trade names identify the source of a product or service for
`users, and thus provide some of the information labeled
`indispensable by the Supreme Court in Virginia State
`Board. Indeed, the government has conceded that
`“[t]rademarks are a form of commercial speech.” Appel-
`lee’s Br. 34 n.5. Because a trademark identifies the
`source of a product or service for users, it is protected
`commercial speech.
`
`

`
`IN RE TAM
`
`5
`
`While it may be true that many marks are used solely
`as a source identifier, that is not the case here. Mr. Tam’s
`mark THE SLANTS does more than merely identify the
`band in the commercial arena. In Friedman, the Court
`reasoned that the optician seeking the trade name “does
`not wish to editorialize on any subject, cultural, philo-
`sophical, or political. He does not wish to report any
`particularly newsworthy fact, or to make generalized
`observations even about commercial matters.” 440 U.S.
`at 11. Here, by contrast, Mr. Tam seeks to trademark the
`name of a musical group, selecting the name “The Slants”
`to “reclaim” and “take ownership” of Asian stereotypes.
`J.A. 129–30. The band draws inspiration for its lyrics
`from childhood slurs and mocking nursery rhymes,
`J.A. 130, and its albums include “The Yellow Album” and
`“Slanted Eyes, Slanted Hearts.” The band “feel[s] strong-
`ly that Asians should be proud of their cultural heritage,
`and not be offended by stereotypical descriptions.” J.A.
`52. With their lyrics, performances, and band name, Mr.
`Tam and The Slants weigh in on cultural and political
`discussions about race and society that are within the
`heartland of speech protected by the First Amendment.
`Is § 2(a) an Abridgement of Speech?
`II.
`A. Benefits of Trademark Registration
`The McGinley court held that the refusal to register a
`mark under § 2(a) does not bar the applicant from using
`the mark, and therefore does not implicate the First
`Amendment. It is true that § 2(a) does not bar the appli-
`cant from using the mark. Here, for example, Mr. Tam’s
`band can continue to perform and advertise using the
`name “The Slants.” However, as the McGinley court
`wrote, § 2(a) denies the applicant access to “benefits
`provided by the Lanham Act which enhance the value of a
`mark.” 660 F.2d at 486 n.12. “Registration is significant.
`The Lanham Act confers important legal rights and
`
`

`
`6
`
`
`
` IN RE TAM
`
`benefits on trademark owners who register their marks.”
`B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S. Ct. 1293,
`1300 (2015).
`These benefits—unavailable in the absence of federal
`registration—are numerous, and include both substantive
`and procedural rights. First, the holder of a federal
`trademark has a right to exclusive nationwide use of that
`mark where there was no prior use by a party other than
`the markholder. See 15 U.S.C. §§ 1072, 1115. Because
`under the common law, a markholder only has the right
`to exclusive use where he has used his mark before, see 5
`J. Thomas McCarthy, McCarthy on Trademarks and
`Unfair Competition § 26:32 (4th ed.), holders of a federal
`trademark have an important substantive right they
`could not otherwise obtain. Also, a registered mark is
`presumed to be valid, 15 U.S.C. § 1057(b), and the mark
`becomes incontestable (with certain exceptions) after five
`years of consecutive post-registration use, id. § 1065; see
`also B&B Hardware, 135 S. Ct. at 1310 (“Incontestability
`is a powerful protection”). A markholder may sue in
`federal courts to enforce his trademark, 15 U.S.C. § 1121,
`and he may recover treble damages if he can show in-
`fringement was willful, id. § 1117. He may also obtain
`the assistance of U.S. Customs and Border Protection in
`restricting importation of infringing or counterfeit goods,
`id. § 1124; 19 U.S.C. § 1526, or prevent “cybersquatters”
`from misappropriating his domain name, 15 U.S.C.
`§ 1125(d). In effect, § 2(a) of the Lanham Act conditions
`trademark registration and all of its attendant benefits on
`the applicant’s selection of a suitable mark. Section 2(a)’s
`registerability conditions are not tethered to the trade-
`mark’s functioning as a source identifier or to any concern
`over the mark creating confusion or being misleading.
`Instead, § 2(a) allows the PTO to determine whether the
`trademark is suitable for registration, in this case wheth-
`
`

`
`IN RE TAM
`
`7
`
`er it is disparaging, which is a moral judgment based
`solely and indisputably on the mark’s expressive content.
`Not only is a disparaging trademark denied federal
`registration, but it cannot be protected by its owner by
`virtue of a § 43(a) unfair competition claim. Id. § 1125(a).
`Section 43(a) allows for a federal suit, much like state
`common law, to protect an unregistered trademark. As
`many courts have noted, it is the use of a trademark in
`commerce, not its registration, which gives rise to a
`protectable right. Miller v. Glenn Miller Prods., Inc., 454
`F.3d 975, 979 (9th Cir. 2006) (“Registration does not
`create a mark or confer ownership; only use in the mar-
`ketplace can establish a mark.”); In re Int’l Flavors &
`Fragrances, Inc., 183 F.3d 1361, 1366 (Fed. Cir. 1999)
`(“The federal registration of a trademark does not create
`an exclusive property right in the mark. The owner of the
`mark already has the property right established by prior
`use. . . . However, those trademark owners who register
`their marks with the PTO are afforded additional protec-
`tion not provided by the common law.”). Equally clear,
`however, is that § 43(a) protection is only available for
`unregistered trademarks that could have qualified for
`federal registration. Two Pesos, Inc. v. Taco Cabana, Inc.,
`505 U.S. 763, 768 (1992) (section 43(a) “protects qualify-
`ing unregistered trademarks and . . . the general princi-
`ples qualifying a mark for registration under § 2 of the
`Lanham Act are for the most part applicable in determin-
`ing whether an unregistered mark is entitled to protection
`under § 43(a)”); Donchez v. Coors Brewing Co., 392 F.3d
`1211, 1215 (10th Cir. 2004) (plaintiff must establish that
`its mark is protectable to prevail in a claim under § 43(a));
`Yarmuth-Dion, Inc. v. D’ion Furs, Inc., 835 F.2d 990, 992
`(2d Cir. 1987) (requiring a plaintiff to “demonstrate that
`his [unregistered] mark merits protection under the
`Lanham Act”). Thus, no federal cause of action is availa-
`
`

`
`8
`
`
`
` IN RE TAM
`
`ble to protect a trademark deemed disparaging, regard-
`less of its use in commerce.
`Section 2(a)’s bar on disparaging marks was a crea-
`tion of the federal government, first developed when
`Congress enacted the Lanham Act. See infra at 21–22.
`Three years later, the United States Trademark Associa-
`tion prepared the Model State Trademark Bill—a bill
`patterned on the Lanham Act in many respects. McCar-
`thy at § 22:5. The Model Bill contained language barring
`a mark from registration if it “consists of or comprises
`matter which may disparage . . . persons, living or dead,
`institutions, belief

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