The First Amendment does not require the government to support disparaging speech, the U.S. Patent and Trademark Office (“USPTO”) argued in its opening brief filed last week in the “Slants” trademark case currently pending before the Supreme Court. Lee v. Tam, No. 15-1293, Pet. Brief at 20 (Nov. 9, 2016).

Portrait of Asian-American band The Slants (L-R: Joe X Jiang, Ken Shima, Tyler Chen, Simon "Young" Tam, Joe X Jiang) in Old Town Chinatown, Portland, Oregon, USA on 21st August 2015. (Photo by: Anthony Pidgeon/Redferns)
Portrait of Asian-American band The Slants (L-R: Joe X Jiang, Ken Shima, Tyler Chen, Simon “Young” Tam, Joe X Jiang) in Old Town Chinatown, Portland, Oregon, USA on 21st August 2015. (Photo by: Anthony Pidgeon/Redferns)



As we’ve previously reported, the case centers on Section 2(a) of the Lanham Act which prohibits the registration of disparaging trademarks. Relying on this provision, the USPTO refused to register “THE SLANTS,” the name of the Asian-American dance-rock band, as a federal trademark. (The USPTO also invoked Section 2(a) to cancel the Washington Redskins’ federal trademark registrations.)

Simon Tam, the Slants’ founder and bassist—not the lead singer, as the USPTO incorrectly represented in its brief—appealed the registration refusal to the Trademark Trial and Appeal Board and then the to US Court of Appeals for the Federal Circuit.  The Federal Circuit, which initially upheld the USPTO’s decision, struck down Section 2(a) as an unconstitutional restriction on speech in a December 2015 en banc ruling.  In re Simon Shiao Tam, 785 F.3d 567, 571 (Fed. Cir. 2015), rev’d en banc, 808 F.3d 1321 (Fed. Cir. 2015). SCOTUS granted the government’s petition for certiorari in September.

USPTO argues Section 2(a) restricts assistance, not speech

The government brief largely reiterates the arguments the UPSTO previously raised before the Federal Circuit. For example, the brief relies on what had been longstanding legal precedent—that refusing to award a trademark registration does not prevent or stop the applicant from using that speech.

In particular, the USPTO argues that the federal trademark system is a government program Congress authorized to supplement the preexisting common law trademark system. Because trademark rights are acquired through use and not registration, Congress was within its rights to define the eligibility criteria for participation in the government program. In its brief, the USPTO draws comparisons to the ban on lobbying for organizations seeking tax-exempt status and a requirement that public libraries use certain internet filters as a condition for receiving federal funding. There is a distinction, the USPTO argues, between restricting the exercise of constitutional rights and withholding government assistance or participation in a voluntary government program.

Aside from a short criticism of the Federal Circuit’s decision, the brief generally steers clear of the argument that the federal trademark registration system involves government speech and that the prohibition of disparaging trademarks therefore cannot be an unconstitutional restriction on speech. The Federal Circuit squarely rejected that argument in its December opinion. Nevertheless, the USPTO once again invokes a recent case where the Supreme Court upheld Texas’s right to deny offensive specialty license plates, but characterizes the license plate system as a government program, rather than government speech. See Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239, 2253 (2015).

USPTO claims trademarks not inherently expressive

The USPTO also tackles an argument the Federal Circuit found particularly persuasive, that the copyright registration system could adopt similar restrictions on disparaging content, censoring our most creative speech, with the rebuttal that commercial trademarks are not inherently expressive the way that copyrightable works are.

Meanwhile, the response to the Federal Circuit’s primary conclusion that the disparagement clause creates a chilling effect on speech is short: Any government subsidy or program can be seen as chilling speech that does not qualify for or benefit from the program.

The brief also addresses the question of common law rights in disparaging trademarks. Although the USPTO has previously argued that applicants denied federal registrations can still rely on their common law rights, the Federal Circuit criticized this argument as “illusionary” in its December decision. As the Federal Circuit pointed out, there is no clear precedent that disparaging marks are entitled to common law trademark protection. The USPTO now directly concedes this point in its brief in footnote 10, acknowledging “[i]t is unclear” whether THE SLANTS would be enforceable at common law. What matters, the government argues, is that the Lanham Act’s disparagement clause does not take away any common law rights the trademark owner may have.

We will continue following the developments of this important case. To receive more updates on this case, subscribe to The Brand Protection Blog.