Matal v. Tam, 582 U.S. 218 (2017) (previously known as Lee v. Tam) is a Supreme Court of the United States case that affirmed unanimously the judgment of the United States Court of Appeals for the Federal Circuit that the provisions of the Lanham Act prohibiting registration of trademarks that may "disparage" persons, institutions, beliefs, or national symbols with the United States Patent and Trademark Office violated the First Amendment., 137 S. Ct. 1744 (2017).
Background Simon Tam is the founder and bassist for the Asian-American dance-rock band The Slants. Tam gave that name to his band to "reclaim" and to "take ownership" of Asian stereotypes. On March 5, 2010, Tam filed his first application to register THE SLANTS. After several appeals, the application was eventually abandoned. On November 14, 2011, Tam filed his second application (App. No. 85/472,044) seeking 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 at the US Patent and Trademark Office (PTO) refused to register Tam's mark and found 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 and explained that the term "slants" had "a long history of being used to deride and mock a physical feature" of people of Asian descent. The examiner found that a substantial composite of persons of Asian descent might find the term offensiveId. precisely because it was being used by an Asian American band: "Here, the evidence is uncontested that applicant is a founding member of a band 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 evidenced by how the applicant uses the work - as the name of an all Asian-American band." That determination made Tam decide to appeal before the Federal Circuit.
Before the United States Court of Appeals for the Federal Circuit in Washington, DC,The Supreme Court, 2016 Term – Leading Cases, 131 Harv. L. Rev. 243 (2017). the case was titled In re Tam. The PTO interpreted the likely meaning of "The Slants" as a term to refer to people of Asian descent, despite claims from the band that the actual meaning referred to its perspective and that it was repurposing the term from an offensive slur. The PTO used anecdotal sources like Urban Dictionary to support its claims. Survey data, linguistics experts, and legal declarations from Asian American community leaders were not considered. The opinion was heard en banc by the Federal Circuit and the majority, which was written by Circuit Judge Moore. The court determined that the Disparaging Provision () of the Lanham Act is unconstitutional and found that Tam was entitled to trademark registration."Recent Case: Federal Circuit Holds the Lanham Act's Antidisparagement Provision Unconstitutional", 129 Harvard Law Review 2265 (2016). Tam was represented by John C. Connell, Ron Coleman and Joel MacMull, then of Archer & Greiner.
The US government petitioned the US Supreme Court for a writ of certiorari, which was granted in September 2016. In addition to the case, there was another case before the Fourth Circuit, Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015), to decide the same issue of whether or not the disparaging provision of the Lanham Act was unconstitutional."DISPARAGING TRADEMARKS: The case of 'in re Tam' and its current impact". Potente."Government Can't Deny Trademarks Over Offensive Names, Appeals Court Rules". NPR. Despite an attempt by Pro Football to merge the two cases, the Supreme Court refused to grant the motion.
Section 2(a)'s ban on the federal registration of "immoral" or "scandalous" marks originated in the trademark legislation of the Lanham Act. A disparaging mark is a mark that "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 (2014)(alterations omitted).
Relevant areas of law Lanham Act's disparaging provision No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists 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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
Viewpoint discrimination Viewpoint discrimination occurs when the government bans not only certain content or topics but also certain ideas.Simon & Schuster, Inc. v. Members of N. Y. State Crime Victims Bd., 502 U.S. 105, 116 (1991) The test for viewpoint discrimination is "[o]ther things being equal, viewpoint discrimination occurs when government allows one message while prohibiting the messages of those who can reasonably be expected to respond."Rosenberger v. Rector & Visitors of the Univ. of Va., 515 U.S. 819, 894 (1995). Additionally, viewpoint discrimination involves the intent to discourage one viewpoint and to advance another.United States v. Kokinda, 497 U.S. 720, 736 (1990) (citing Monterey County Democratic Cent. Comm. v. United States Postal Serv., 812 F.2d 1194, 1198-1199 (9th Cir. 1987)). The general concern is that the government tries to eradicate not only content from the marketplace but also certain viewpoints, whether positive or negative.In re Tam, 808 F.3d at 1334-35. Something that rises to the level of viewpoint-based discrimination is deemed to be unconstitutional.Sons of Confederate Veterans v. Comm'r of the Va. Dept. of Motor Vehicles, 288 F.3d 610, 623 (4th Cir. 2002).
Content discrimination In Reed v. Town of Gilbert, the court stated, "Government regulation of speech is content based if a law applies to particular speech because of the topic discussed or the idea or message expressed."Reed v. Town of Gilbert, 135 S. Ct. 2218, 2227 (2015). The Court further determined, "This commonsense meaning of the phrase 'content based' requires a court to consider whether a regulation of speech 'on its face" draws distinctions based on the message a speaker conveys."Reed, 135 S. Ct. at 2227 (citing Sorrell, 131 S. Ct. 2653, 2663, 180 L. Ed. 2d 544-55). For that reason, content-based discrimination is presumptively invalid. If something is found to discriminate on the basis of content, it must survive strict scrutiny.See Pleasant Grove City v. Summum, 555 U.S. 460, 469 (2009).
Strict scrutiny According to Nat'l Assoc. of Mfrs. v. Taylor: "[t]o satisfy strict scrutiny, the government must establish three elements: (1) 'the interests the government proffers in support' of the statute must be properly characterized as 'compelling'; (2) the statute must 'effectively advance [] those interests'; and (3) the statute must be 'narrowly tailored to advance the compelling interests asserted.'Nat'l Assoc. of Mfrs. v. Taylor, 582 F.3d 1, 11 (D.C. Cir. 2009) (citing Blount v. SEC, 61 F.3d 938, 943, 314 U.S. App. D.C. 52 (D.C. Cir. 1995).
Central Hudson: intermediate scrutiny For Central Hudson to apply, the court would have to determine that the statute at issue deals with commercial speech.See generally Cent. Hudson Gas & Elec. Corp. v. Public Serv. Comm’n, 447 U.S. 557 (1980) (https://supreme.justia.com/cases/federal/us/447/557/). From Central Hudson, the Supreme Court developed a four-part test to determine whether a statute passes muster: (1) Whether the expression is protected by the First Amendment—for it to fall here, it must concern lawful activity and not be misleading; (2) whether the asserted governmental interest is substantial; (3) whether the regulation directly advances the governmental interest asserted; and (4) whether the regulation is no more extensive than necessary to serve that interest—there must be a "reasonable fit" between the government's ends and the means of achieving those ends.
Government speech For something to be classified as government speech, courts look at four factors: (1) the central purpose of the program in which the speech in question occurs; (2) the degree of editorial control exercised by the government or private entities over the content of the speech; (3) the identity of the literal speaker; and (4) whether the government or the private entity bears the ultimate responsibility for the content of the speech.Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 460, (E.D. Va. 2015) (citing Sons of Confederate Veterans v. Vehicles, 288 F.3d at 618).
Federal Circuit
The central issue before the Federal Circuit was to determine whether the disparaging provision of the Lanham Act was unconstitutional and should therefore be voided. In the case In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), Circuit Judge Moore decided that the disparaging provision of the Lanham Act was unconstitutional for various reasons and that Tam should be granted trademark protection on THE SLANTS."Asian-American band 'The Slants' overturns USPTO rule on 'disparaging' trademarks". Ars Technica.
Viewpoint-based and content-based discrimination The court determined that the Lanham Act was viewpoint-based discriminatory because the government chooses to deny trademark protection to a mark always because of the message that the mark conveys. The government tried to defend their position before the Federal Circuit by saying that it should be able to deny protection to the most "vile" racial epithets and images, but the Federal Circuit stated, "When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint."In Re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (citing Sorrell, 131 S.Ct. at 2664). The Federal Circuit bolstered its stance that it is viewpoint discriminatory because the PTO refused to register "The Slants", but registered marks such as "Celebrasians" and "Asian Efficiency".
The Federal Circuit found the only difference between marks such as "The Slants" and "Celebrasians" and "Asian Efficiency" is the messages conveyed. The Slants could be seen as being derogatory towards those of Asian descent and the others positive.
In the alternative, the Federal Circuit determined that the disparaging provision is content-based discriminatory, in addition to viewpoint-discriminatory. Additionally, the Federal Circuit came to the determination that even though trademarks inherently deal more with commercial speech that expressive speech, when the government cancels a mark under the disparaging provision, it affects more the expressive aspects of speech than not its commerciality. Therefore, the Federal Circuit found that if the disparaging provision is not found to be viewpoint discriminatory in light of a higher court potentially overturning parts of the case, it must be content-based discriminatory and survive strict scrutiny unless an exception applied."Federal appeals court decides 'The Slants' case: excluding 'disparaging marks' from trademark registration violates the First Amendment". The Washington Post.
Strict scrutiny or intermediate scrutiny (Central Hudson)