As published in Law360.

On Jan. 18, 2017, the U.S. Supreme Court heard oral argument in Lee v. Tam to decide whether the Trademark Act's prohibition on registering "disparaging" marks violates the First Amendment.

Simon Tam formed the rock band called "The Slants" in 2006 with fellow Asian-American musicians. The name was chosen, in part, as a conscious "reappropriation" of a derogatory reference to Asian people in an attempt to take on stereotypes and own them. Tam tried twice to register his trademark, but the trademark examiner rejected his applications on the grounds that it was disparaging to "persons of Asian descent" under Section 2(a) of the Trademark Lanham Act (Lanham Act), which prohibits registration of marks that may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (disparagement clause). The second time, Tam appealed to the Trademark Trial and Appeal Board, which affirmed the rejection. Tam then appealed to the Federal Circuit, arguing that his mark was not unregistrable under Section 2(a) of the Lanham Act, and that the disparagement clause is contrary to the First Amendment and unconstitutionally vague. A panel of Federal Circuit rejected his arguments and affirmed the board's decision. The Federal Circuit then sua sponte ordered rehearing by the full bench, asking the parties to file briefs on the issue of whether the bar on registration of disparaging marks in Section 2(a) violates the First Amendment. The en banc court held that the disparagement bar is unconstitutional, vacated the board's decision, and remanded. The government successfully appealed to the U.S. Supreme Court.

The court declined the NFL Washington Redskins' owners' request to have their similar challenge to the disparagement clause decided alongside Tam's. Because this decision will likely impact the Redskins case, the Fourth Circuit suspended their case pending this decision.

In its briefs to the court, the government argued that the disparagement clause is constitutional under the First Amendment. It made a number of arguments, including most notably that (1) by not registering the mark the government was not regulating speech, just refusing to subsidize it through a government program; (2) speech was not restricted because the would-be registrant could still use the mark; (3) by registering the mark, the speech at issue became government speech; and (4) in any event, the disparagement provision was not a viewpoint-based restriction on speech.

In Tam's brief, his main three arguments were: (1) the disparagement clause imposed a significant viewpoint-based burden on speech contrary to the First Amendment by denying him the significant benefits of trademark registration; (2) his trademark was not disparaging and thus should not be barred; and (3) the clause was unconstitutionally vague. Central to his first argument was that it was a significant burden on speech to deny him the benefits of registration: presumptions of validity and ownership, the ability to protect against later cancellation through "incontestability," and greater protections against counterfeiting and against infringing importation. In addition, comparing the trademark and copyright registration systems, he argued against the government's contentions that trademark registration is a government subsidy or government speech, and that trademarks are not pure commercial speech, but also expressive speech, and therefore must be reviewed as expressive speech.

In oral argument, some of the justices appeared to accept Tam's assertions that the disparagement clause was a viewpoint-based discrimination against expressive speech. Several of the justices questioned the rationale behind a provision that essentially said you could say nice things about a minority group, but not bad things about them. As Justice Elena Kagan said, "I would have thought that that was a fairly classic case of viewpoint discrimination." When Malcolm L. Stewart, arguing for the government, later defended the statute as sweeping with a broad brush, Justice Kagan responded, "But that's like saying it does so much viewpoint-based discrimination that it becomes all right."

Arguing on behalf of Tam, John C. Connell opened by stating that if his client had sought to register the mark of his band as The Proud Asians, "we would not be here today." Justice Anthony Kennedy asked whether the government, under a properly drawn statute, could decline to the register "The Slants" if it was used by a non-Asian band that made fun of Asians. Connell said it could not, agreeing with Justice Kennedy's articulation of Tam's position: "The First Amendment protects absolutely outrageous speech insofar as trademarks are concerned."

Both Justices Kennedy and Samuel Alito seemed to find compelling Tam's comparison in his brief between copyright and trademark, in which he pointed out that would clearly be an unconstitutional restraint on speech if the government were to bar copyright registration on the basis of the viewpoint of the author. Justice Alito successfully pressed the government to admit that it would be unconstitutional to deny copyright protection to objectionable material.

Justice Kennedy, discounting the government's attempt to distinguish the copyright and trademark registration programs from each other, said that "ignores the fact that we have a culture in which we have T-shirts and logos and rock bands and so forth that are expressing a point of view." Justice Alito was even more direct. "Do you deny that trademark are used for expressive purposes?" Stewart did not.

Connell articulated Tam's arguments regarding expressive speech in term of their "noncommercial" nature. "The commercial aspect is that part of the mark that simply identifies the source of the good or service in question. In the case of THE SLANTS, there's another component, that being the noncommercial, which communicates the political and social message of Asian pride." He later asserted that "The Slants," like Justice Alito's example of Nike's slogan "Just Do It," was both commercial and expressive speech. "You have the source identifier that is inextricably intertwined with the message that the mark is conveying about the source or about the goods and services identified."

Justice Kennedy pressed whether he was saying that trademarks should be treated "just like we treat speech in a public park." Connell agreed it was. Justice Kagan responded that "can't be right," due to all the other content-based distinctions that trademark law makes, such as prohibiting registration of marks that are likely to cause confusion, are descriptive, or functional, among others. "You couldn't make any of those distinctions in a public park, and yet, of course, you can make them in trademark law, can't you?" Connell, however, distinguished those other distinctions as viewpoint-neutral and advancing the commercial objectives of the Lanham Act in terms of reducing consumer confusion."

Justice Kennedy, trying to get the government to define the constitutional standard of review the disparagement clause must receive, cornered the government into admitting that the statute did not met strict scrutiny. Stewart said, however, that the basic test would be whether the provision was "reasonably related to the objectives of the government program."

Justice Stephen Breyer repeatedly tried to get the government to define what trademark objective the disparagement provision advances. He seemed unimpressed by the answer he heard, which he recapped as "to help prevent the user of the product from being distracted from the basic message, which is, I made this product." Since many trademarks also used "very distracting messages, probably as much or more so than the one at issue ... , what business does Congress have picking out this one, but letting all the other distractions exist?" Justice Breyer asked.

Justice Breyer later asked Connell, "[t]o what extent does interfering with viewpoints here serve a trademark-related purpose?" Connell responded, "Disparaging messages in trademark do not interfere with the source." Chief Justice John Roberts later pressed, "I think [the government is] suggesting that there's more to their program than just source identification." Connell said that "the only purpose of the Lanham Act ... was the reduction of consumer confusion and the protection of the goodwill on the mark holder." Chief Justice Roberts said, "Well, we heard from [the government] that they thought the disparagement aspect would distract from the commercial identification." Connell responded that that purpose was "nowhere in the legislative history and that's nowhere in the legislation itself." Rather, he said, it "seems to be pulled out of thin air by the government."

Justice Kennedy and Chief Justice Roberts expressed concern that the U.S. Patent and Trademark Office's argument that it was merely a government program denying benefits was "circular." Likewise, Justice Alito questioned whether the government was "stretching this, the concept of a government program, past the break point." Justice Kagan expressed that she "always thought that government programs were subject to one extremely important constraint, which is that they can't make distinctions based on viewpoint." Justice Kagan did not appear to buy the government's argument. "[E]ven assuming that this is not just a classic speech restriction, you're still subject to the constraint that you can't discriminate on the basis of viewpoint."

Justice Sonia Sotomayor seemed to accept the government's argument that Tam was "asking the government to endorse [Tam's] name to the extent of protecting it in a way that it chooses not to. ... And why shouldn't we consider it in those ways when your speech is not being burdened in any traditional way?" Justice Sotomayor further pressed to try to get the answer to her question of why it was a burden when he still could use his name. "He can still sue. He can still compete. He's just not getting as much as he would like, but he's not stopped from doing what he's doing." Connell responded that Tam's only resort would be to seek protections that did not have the "extensive and substantial benefits that this Court has recognized under trademark registration."

Addressing the "government speech" argument, Justice Kagan stated that "there are aspects of this program that seem like government speech itself, maybe not quite that, but something approaching it," because the government published registered marks and communicated them to foreign countries, although "I doubt anybody would ascribe them to the government ... doesn't that aspect of the program give the government greater leeway here than it would in a typical program in which no government speech itself is involved?" Connell denied that it did. It was merely a recordation of the marks, in no way different from copyright registration, patent registration, marriage license registration, or another other ministerial governmental registration.

Justice Ruth Bader Ginsburg further pressed, "But doesn't the government have some interest in disassociating itself from racial ethnic slurs" as it did in the Walker v. Texas Div., Sons of Confederate Veterans case in which the court found the government could deny issuing Texas vanity license plates depicting the Confederate flag. Connell distinguished it, "[t]his is not a government ID, issued on government property, controlled by the government as to design and content and so on ... it's exactly the opposite."

Responding to Justice Ginsburg's question regarding the issue of vagueness, Stewart noted that "the PTO receives 300,000 trademark applications every year, so it's not surprising that there is some potential inconsistency." Justice Sotomayor retorted, "Isn't it another way to say it's not clear enough for them to get it right?"

The court heaped a good deal of skepticism toward both sides of the argument, perhaps a little more articulated against the government. The issue on which this case may turn is whether the court acknowledges that the disparagement clause advances a trademark objective (regardless of the level of scrutiny) that justifies what many of the justices seemed to accept as a viewpoint-based determination. Whether this is a burden on speech or merely the denial of a government program will likely hinge on whether the court finds sufficiently significant the benefits of federal trademark registration. If the government speech arguments gain any traction, it will depend on the weight the court places on the PTO's "publication" of trademarks on the Principal Register and its communication to foreign countries. In any event, we should know by this summer.