Brief Fact Summary.
Simon Tam was the lead singer of dance-rock band called “The Slants”, in which the members were consisted of Asian-Americans. Tam chose the band name to reclaim the anti-Asian slur. He applied for the registration of the mark “THE SLANTS” from the Patent and Trademark Office, but was denied under a Lanham Act provision prohibiting the registration of trademarks that may “disparage or bring into contempt or disrepute” any “persons.”
Synopsis of Rule of Law.
A law may not restrict commercial speech, which is protected under the First Amendment. If a law seeks to regulate commercial speech, the Government must demonstrate that the law furthers its substantial interest and does not seek to abridge the free speech.
Trademarks are private, not government, speech.View Full Point of Law
Simon Tam, the lead singer of dance-rock band called “The Slants” chose the band name to reclaim the anti-Asian slur. His application for the registration of the mark “THE SLANTS” was denied by the Patent and Trademark Office, because a Lanham Act provision prohibiting the registration of trademarks that may “disparage or bring into contempt or disrepute” any “persons.” When deciding whether a trademark is disparaging, an examiner at the PTO generally applies a two-part test: considers the likely meaning of the matter at question; asks whether the meaning may be disparaging to a substantial composite of the referenced group. The PTO has specified that an application’s good intention underlying its use of a term does not make the term less objectionable.
Does the Lanham Act provision prohibiting the registration of trademarks that may “disparage or bring into contempt or disrepute” any “persons” violate the Constitution?
Yes, the provision violates the Free Speech Clause of the First Amendment because it offends the First Amendment principle that speech may not be banned on the ground that it expresses ideas that offend.
To prohibit all sides from criticizing their opponents as does the clause at issue makes the law more viewpoint based. The First Amendment protects the right to create and present arguments for particular positions in particular ways, as the speaker chooses. By mandating positivity, the law here might silence dissent and distort the marketplace of ideas. Because trademarks qualify as commercial speech, they are subject to the First Amendment requirements.
As opposed to what the PTO argues, the registration of trademarks do not constitute government speech because the Federal Government does not edit marks submitted for registration. Also, an examiner may not reject a mark based on the viewpoint that it appears to express and thus, registration is mandatory. Once it is registered, the PTO is not authorized to remove it from the register. If the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.
The disparagement clause discriminates on the basis of a”viewpoint.” While the Government has claimed that the clause serves important interests, the free speech rights protect the freedom to express the thought that we hate. Moreover, the clause at issue is not narrowly drawn to drive out trademarks that support invidious discrimination. Thus, the clause threatens free speech and is unconstitutional.