On January 18, 2017, the United States Supreme Court heard oral argument in Michelle K. Lee, Director, United States Patent and Trademark Office v. Simon Shiao Tam, No. 15-1293. The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the United States Patent and Trademark Office (USPTO) to refuse to register “disparaging” trademarks, is constitutional under the First Amendment.

Background

In 2011, Simon Tam (“Tam”), founder of Asian-American rock band “The Slants,” filed a trademark application with the USPTO to register his band’s name. His adoption of the mark was meant to “reclaim” and “take ownership” of Asian stereotypes.

The USPTO Examiner reviewing Tam’s application refused to register the mark under Section 2(a) of the Lanham Act, finding that, despite Tam’s intentions, the term was “disparaging” to a “substantial composite of persons of Asian descent.” Tam appealed the Examiner’s rejection to the Trademark Trial and Appeal Board (“TTAB”) of the USPTO. The TTAB upheld the Examiner’s rejection of the mark.

Tam then appealed the rejection to the Federal Circuit Court of Appeals. A three-judge panel of the Federal Circuit initially upheld the rejection. But in December 2015, the Federal Circuit, sitting en banc, reversed course and held that Section 2(a) was unconstitutional and could not survive the “strict scrutiny” standard used to review government regulations that affect the right to free speech under the First Amendment. In its en banc decision, the Federal Circuit noted that (i) trademarks include an expressive “speech” component, in addition to serving their commercial function as an identifier of the source of goods or services; (ii) Section 2(a) is neither content-nor viewpoint-neutral; and (iii) denial of the benefits of trademark registration may deter applicants from applying for trademark protection, which in turn may curtail free speech.

The USPTO petitioned the Supreme Court to review the Federal Circuit’s en banc decision, and in September 2016, the Supreme Court granted the USPTO’s petition. The USPTO asked the Supreme Court to determine whether the disparagement provision of Section 2(a) is facially invalid under the free speech clause of the First Amendment. Tam’s response to the USPTO’s petition further asked the Supreme Court to determine whether Section 2(a) is unconstitutionally vague under the First and Fifth Amendments.

During the January 18, 2017 oral argument, Malcolm L. Stewart, the USPTO’s Deputy Solicitor General, argued on behalf of the USPTO, and John C. Connell argued on behalf of Tam. The Supreme Court’s questions to the USPTO’s counsel, Mr. Stewart, focused primarily on the issue of why the disparagement provision did not run afoul of the prohibition against government programs engaging in viewpoint-based discrimination. By contrast, its questions to Tam’s counsel, Mr. Connell, focused on the degree to which trademarks incorporate a protected free speech component separate from their commercial function.

The USPTO’s Arguments

Mr. Stewart began by asserting that the disparagement provision of Section 2(a) constitutes a reasonable limit on access to a government program, rather than a restriction on free speech. Chief Justice Roberts, and Justices Kennedy and Ginsburg, asked Mr. Stewart to distinguish the disparagement provision of Section 2(a) from the United States copyright system, under which the government cannot refuse to register objectionable material. Mr. Stewart noted that trademarks “generally have not historically served as vehicles for expression,” and that barring copyright registration for The Slants’ music would pose “a much more substantial First Amendment issue.” Mr. Stewart also argued that the disparagement provision was “only one of a number of restrictions” on the registrability of a trademark, including descriptiveness and genericness.

Justice Breyer asked Mr. Stewart what purpose the disparagement provision served. Mr. Stewart answered that it aligned with the primary purpose of a trademark, which is to identify the source of a good or service, but “is not expressive in its own right.” Mr. Stewart elaborated that when one uses a mark that has other meanings in common discourse, “Congress says, as long as you are promoting your own product, saying nice things about people, we'll put up with that level of distraction.” Justice Breyer countered that there were many examples of trademarks that conveyed “distracting messages,” and asked “what business does Congress have picking out this one, but letting all the other distractions exist?” Mr. Stewart responded that, in cases such as racial epithets, such marks “may be no more distracting than a positive message, but Congress can determine this is the wrong kind of distraction.” Justice Kagan expressed skepticism at Mr. Stewart’s answer, and proceeded to ask Mr. Stewart several questions as to why the disparagement provision didn’t run afoul of the constitutional restriction preventing government programs from making viewpoint-based distinctions.

Justice Kagan illustrated the issue by noting that the disparagement provision would permit a registrant to obtain a trademark by saying “good things about something, but [not by saying] bad things about something.” Mr. Stewart responded that libel laws, for example, have not historically been treated as discriminating based on viewpoint. He also provided the hypothetical example of a public university setting aside a particular room for debate, and issuing rules against racial epithets or personal attacks on the school community; Mr. Stewart argued that it would be “extraordinary” to argue that such rules could not stand because they make viewpoint-based distinctions. Chief Justice Roberts pushed back, asserting a “particular discussion venue” at a public university could not be compared to the “entire trademark program.” Justices Kagan and Alito also seemed skeptical of Mr. Stewart’s arguments. Justice Ginsburg asked whether it mattered that “The Slants” did not intend to use that term to disparage. Mr. Stewart answered that there was evidence to show that many Asian-Americans “still found the use of the word as a band name offensive.”

Justice Ginsburg also followed up on the issue of whether the disparagement provision was unconstitutionally vague, noting that a “disparaging” term could be found appropriate in one trademark application but inappropriate in another. Mr. Stewart admitted that the disparagement provision does not impose a bright-line rule, but that inconsistencies in its application were due to misunderstandings by the USPTO in “instances where people are deliberately using terms that have historically been insulting, but with the intent to be edgy, provocative, to reclaim the slur.”

Tam’s Arguments

Mr. Connell began his portion of the oral argument by asserting that trademarks constitute both commercial and noncommercial speech, and that the disparagement provision “specifically targets the noncommercial speech and denies registration to marks that only express negative views.”

Justice Sotomayor asked Mr. Connell why the government should have to “endorse” Tam’s mark “to the extent of protecting it in a way that [the government] chooses not to,” when nothing prevented Tam from using the mark or suing others for use of the mark in the absence of federal trademark registration. Mr. Connell responded that a trademark registrant is denied certain benefits when his registration is denied, and that denial of these benefits due to the content of the noncommercial speech aspect of the applied-for mark is unconstitutional.

Chief Justice Roberts and Justices Breyer and Alito asked Mr. Connell to respond to the USPTO’s position that the purpose of the trademark provision is to identify the source of a good or service, and that allowing registration of disparaging marks would distract from that purpose. Mr. Connell reiterated that the government cannot burden the noncommercial speech aspect of a trademark, regardless of its message. The Justices appeared skeptical of that assertion. Justice Alito noted that there are “laws all over the place,” including product disparagement, libel and slander laws, that have the potential to burden expression. And Justice Sotomayor asked whether, for example, one should be permitted to register as a trademark a term that is proven in court to be libelous or slanderous, as under Mr. Connell’s argument, “canceling it would be an abridgement of the First Amendment.” When Mr. Connell answered yes, Justice Sotomayor responded, “That makes no sense.”

Justice Kagan asked whether the other prohibitions on trademark registration in Section 2 of the Lanham Act—such as the prohibitions against marks that are likely to cause confusion or are misdescriptive—could stand if the disparagement prohibition could not. Mr. Connell responded that those sections would survive, as they are “viewpoint-neutral” and advance the commercial objectives of the Lanham Act. Justice Kagan noted that those prohibitions, however, were not content-neutral.

Both Justice Alito and Chief Justice Roberts continued to express concern over Tam’s emphasis on the expressive aspects of trademarks separate from their commercial function. Justice Alito summarized the USPTO’s position as “disparaging messages get in the way of the objective of this program, which is to identify the source” and asked “To what extent does interfering with viewpoints here serve a trademark-related purpose?” Mr. Connell responded by asserting that the trademark program is “open to all comers and [] simply is trying to advance the goal of source identification.” Mr. Connell further asserted that the Lanham Act is not a “politeness statute,” and that “reducing [] the level of insult or occasion of insult to customers” was “nowhere in the legislative history” of the Act.

The USPTO’s Reply Arguments

With the remainder of his reserved time, Mr. Stewart noted that (i) denial of registration did not restrict Tam’s ability to use his mark; (ii) if the test for constitutionality was “could the government ban this speech altogether?,” the trademark program would no longer exist due to other content-based registration criteria for trademarks; and (iii) the consequence of Mr. Connell’s position is that the United States government would be forced to place on its trademark Principal Register “biased racial epithets, insulting caricatures of venerated religious figures.”

Conclusion

It is difficult to tell from the oral argument how the Supreme Court will decide this case. The Justices expressed considerable skepticism toward the USPTO’s arguments that the disparagement provision did not run afoul of the prohibition against viewpoint-based discrimination. At the same time, however, the Justices also asked Tam’s counsel several hard questions concerning the expressive aspect of trademarks and the degree to which that expressive aspect might interfere with their commercial function. Hopefully, however, the Supreme Court’s decision will answer the question of whether or not the USPTO may refuse to register “disparaging” marks under Section 2(a) of the Lanham Act.