On April 20, 2016, the United States Patent and Trademark Office (the “PTO”) petitioned for a writ of certiorari on the following question:
Whether the disparagement provision in 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of… matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” is facially invalid under the Free Speech Clause of the First Amendment.
Respondent Tam sought federal registration for the mark THE SLANTS in connection with his dance-rock band. Pursuant to 15 U.S.C. § 1052(a), the PTO refused registration on the ground that it believed the mark to refer to person of Asian ancestry and to be disparaging of them.57 The United States Court of Appeals for the Federal Circuit (the “CAFC”), in a panel decision, originally affirmed the PTO’s decision, 58 but then revisited the decision en banc and held that the disparagement provision of § 1052(a) is facially invalid under the First Amendment.59
The PTO’s argument, in essence, is as follows. Section 1052(a) does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark.60 Absent some other restriction, people are free to use disparaging racial terms to identify their goods and services.61 Section 1052(a) does not restrict a mark owner’s common-law trademark protections (because trademark rights arise through use of a mark in commerce in connection with particular goods and services).62 Rather, § 1052(a) directs the PTO to not bestow the benefits of federal registration on disparaging marks.63 It reflects Congress’s judgment that the federal government should not affirmatively promote the use of racial slurs and other disparaging terms by granting them the benefit of registration.64 That modest limitation on the trademark system, the PTO argues, does not violate the First Amendment.65
Tam argues in his brief that, while the CAFC’s en banc decision was correctly decided, the Supreme Court should grant certiorari to resolve, once and for all, the important issues raised in this litigation. Tam reasons that his trademark rights will not be secure until the Supreme Court rules on this issue, as various courts are going back and forth on it.66 In addition to asking the Supreme Court to resolve the constitutionality of § 1052(a) under the First Amendment, Tam proposed two additional questions: first, does the mark THE SLANTS “disparage… persons, living or dead;” and, second, is the disparagement clause unconstitutionally vague?67
The PTO replied to Tam’s argument on July 12, 2016, opposing his two additional proposed questions on the grounds that they were not previously raised.68
The Supreme Court granted certiorari on September 29, 2016, but gave no indication as to which formulation of the question(s) presented is proper. Dates for oral argument are yet to be determined.