On January 18, 2017, the U.S. Supreme Court heard argument in Lee v. Tam, a closely watched case that pits the Lanham Act against the First Amendment. Overall, the justices seemed skeptical that the law could withstand scrutiny, but also appeared uncertain about how Tam prevailing would affect trademark law.
In 2011, Simon Tam applied to register THE SLANTS as a trademark for his band to "'take ownership' of Asian stereotypes." The U.S. Patent and Trademark Office denied his application under its authority to refuse registration for trademarks that might disparage people, institutions, beliefs or national symbols. See 15 U.S.C. § 1052(a). Tam appealed that decision to the U.S. Court of Appeals for the Federal Circuit, which held en banc that the denial violated Tam's First Amendment rights.
In its opinion, the Federal Circuit acknowledged that, even without registration, The Slants would be able to say whatever they want about Asian stereotypes, which makes this case unique. But the court held that denying Tam the benefits of registration because his mark was "disparaging" subjected him to an "unconstitutional condition" that, if imposed directly, would violate the First Amendment. This set up a battle between Tam and the government, against the backdrop of another high-profile trademark dispute involving the REDSKINS trademark, over how the government defines who is eligible for what Justice Ginsburg called the "extra benefits" of trademark registration.
At oral argument, Justice Kennedy and Justice Alito quickly put the government on the defensive by forcing it to concede that copyright registration could not be denied on the same basis that Tam had been denied his trademark registration. But it was Justice Kagan that offered the sharpest skepticism. After asking the government to defend its denial of Tam's trademark as viewpoint neutral, Justice Kagan finally remarked that the government was simply arguing that "it does so much viewpoint-based discrimination that it becomes alright."
Justice Sotomayor offered the toughest questions to Tam's counsel, arguing that he was "asking the government to endorse" offensive messages and questioning whether Tam's speech had been burdened at all. The remaining justices seemed more concerned, however, with sorting out when and how the government might regulate disparagement in other contexts even if it could not do so here.
At the close of oral argument, Justice Kagan touched on why Lee v. Tam has attracted so much attention—and more than 30 amicus briefs—in suggesting that victory for Tam could call into question other parts of the Lanham Act that allow the USPTO to deny registration for marks that are scandalous, descriptive or confusingly similar to existing marks. These determinations often involve the types of content-based and even viewpoint-based judgments that courts rarely permit in other areas of the law. Even Tam's counsel admitted that some of these provisions would inevitably be struck down if the Court holds that the government cannot deny registration to "disparaging" marks. The extent to which they survive Lee v. Tam will be closely watched.
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