Mr. Tam is the “front man” for the Asian American dance-rock band The Slants. Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes, and its albums include The Yellow Album and Slanted Eyes, Slanted Hearts. The band “feel[s] strongly that Asians should be proud of their cultural heritage, and not be offended by stereotypical descriptions.”
On November 14, 2011, Mr. Tam filed an application to register the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band,” based on his use of the mark since 2006. The examiner refused to register Mr. Tam’s mark, finding it likely disparaging to “persons of Asian descent”
under § 2(a). The examiner found that the mark likely referred to people of Asian descent in a disparaging way, explaining that the term “slants” had “a long history of being used to deride and mock a physical feature” of people of Asian descent. Even though Mr. Tam is Asian, the Board of Examiners of the Patent Office found that a substantial composite of persons of Asian descent would find the term offensive and so denied Tam’s application on grounds that the mark was disparaging.
Tam appealed on grounds that Section 2 (a) of the Lanham Act is unconstitutional. On appeal, a panel of the court affirmed the Patent Board’s determination.
Having found the mark disparaging under § 2(a), the panel held that binding precedent foreclosed Mr. Tam’s arguments that § 2 (a) is unconstitutional, including Mr. Tam’s argument that § 2 (a) violates the First Amendment on its face. Parties were then asked to brief the full court on the issue of whether the bar on registration of disparaging marks under § 2 (a) violates the First Amendment.
CIRCUIT JUDGE MOORE Strict scrutiny is used to review any governmental regulation that burdens private speech based on disapproval of the message conveyed. Section 2(a), which denies important legal rights to private speech on that basis, is such a regulation.
The disparagement provision at issue is viewpoint discriminatory on its face. The PTO rejects marks under § 2 (a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a positive, non-disparaging manner. In this case the PTO refused to register Mr. Tam’s mark because it found the mark “disparaging” and “objectionable” to people of Asian descent. … But the PTO has registered marks that refer positively to people of Asian descent. … Yet the government registers marks that refer to particular ethnic groups or religions in positive or neutral ways—for example, NAACP, THINK ISLAM, NEW MUSLIM COOL, MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B CATHOLIC…. Section 2 (a) does not treat identical marks the same. A mark that is viewed by a substantial composite of the referenced group as disparaging is rejected. It is thus the viewpoint of the message conveyed which causes the government to burden the speech. This form of regulation cannot reasonably be argued to be content neutral or viewpoint neutral.
… The government’s argument also fails because denial of registration under § 2 (a) turns on the referenced group’s perception of a mark. Speech that is offensive or hostile to a particular group conveys a distinct viewpoint from speech that carries a positive message about the group.
The government cannot escape strict scrutiny by arguing that § 2 (a) regulates commercial speech. True, trademarks identify the source of a product or service, and therefore play a role in the “dissemination of information as to who is producing and selling what product, for what reason, and at what price.” … But they very commonly do much more than that. And, critically, it is always a mark’s expressive character, not its ability to serve as a source identifier that is the basis for the disparagement exclusion from registration. The disparagement provision must be assessed under First Amendment standards applicable to what it targets, which is not the commercial-speech function of the mark.
This case exemplifies how marks often have an expressive aspect over and above their commercial-speech aspect. Mr. Tam explicitly selected his mark to create a dialogue on controversial political and social issues. With his band name, Mr. Tam makes a statement about racial and ethnic identity. He seeks to shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this—indeed, because of it—Mr. Tam’s band name is expressive speech.
Importantly, every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a message that is disparaging to certain groups. Every single time registration is refused or cancelled pursuant to the disparagement provision, it is based upon a determination by the government that the expressive content of the message is unsuitable because it would be viewed by the referenced group as disparaging them….
Because § 2 (a) discriminates on the basis of the content of the message conveyed by the speech, it follows that it is presumptively invalid, and must satisfy strict scrutiny to be found constitutional. “In the ordinary case it is all but dispositive to conclude that a law is content-based and, in practice, view point discriminatory.”…
We conclude that the government has not presented us with a substantial government interest justifying the § 2 (a) bar on disparaging marks. All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive. This is not a legitimate interest. With no substantial government interests, the disparagement provision of § 2 (a) cannot satisfy the Central Hudson test. We hold the disparagement provision of § 2(a)
unconstitutional under the First Amendment.
Although we find the disparagement provision of § 2 (a) unconstitutional, nothing we say should be viewed as an endorsement of the mark at issue. We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities. Even Mr. Tam, who seeks to appropriate the term “slants,” may offend members of his community with his use of the mark…. But much the same can be said of many decisions upholding First Amendment protection of speech that is hurtful or worse. Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate.” The First Amendment protects Mr. Tam’s speech, and the speech of other trademark applicants.
The denial of Mr. Tam’s application is vacated.
CRITICAL THINKING:
In June of 2014, the US Patent and Trademark Office ruled that the Washington Redskins’ trademarked name was offensive to Native Americans and therefore should be canceled. The team appealed, but the federal court upheld the cancellation. The Redskins have now appealed to the US Supreme Court. In light of the decision in the Tam case, how do you think the high court will rule in this case?
ETHICAL DECISION MAKING:
What values are upheld by this decision? What values were upheld by the decision in the Redskins case?