Lee v. Tam: Supreme Court Takes on the Slants

by Dennis Crouch

In its decision in this trademark registration case, the Federal Circuit found the statutory prohibition against registering “disparaging marks” an unconstitutional governmental regulation of speech in violation of the First Amendment. (En banc decision).  I noted in my December 2015 post that “there would be a good chance for Supreme Court review of the case if the government presses its position.”

The Supreme Court has now granted the USPTO’s petition for writ of certiorari asking:

Whether the disparagement provision of the Lanham Act, 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.

In the case, Simon Tam is seeking to register a mark on his band name “The Slants.” The USPTO refused after finding that the mark is disparaging toward individuals of Asian ancestry.

Tam’s responsive brief was unusual in that he agreed that Certiorari should be granted.  The brief also restated and expanded the question presented as follows:

1. Whether the disparagement clause bars the registration of respondent’s trademark.
2. Whether the disparagement clause is contrary to the First Amendment.
3. Whether the disparagement clause is unconstitutionally vague under the First and Fifth Amendments.

While the Federal Circuit majority opinion had agreed that the disparagement clause was contrary to the First Amendment, only a two-judge concurring opinion indicated that the clause is unconstitutionally vague.  Thus, the reframing of the question presented here appears an attempt to offer alternative reasons for affirmance.  The Supreme Court offered no indication as to which question is proper.

Congratulations to Ron Colemen for shepherding this case and Profs Volokh and Banner who apparently wrote the petition response.

77 thoughts on “Lee v. Tam: Supreme Court Takes on the Slants

  1. 5

    Did anyone else notice that the cert petition does not present a circuit split? Why does the SCotUS take cert to the CAFC when there is no circuit split? To reverse?

  2. 4

    It is getting somewhat harder for amicus briefs to pin the “death squad” badge on PTO IPRs. New rules are in the works to make claim amendments easier [even though IPR claim amendments are actually rarely even attempted]. Refusals to even institute IPRs continue up, and after that and settlements, of those IPRs actually instituted reportedly in the latest 36 final decisions 468 (68.42%) of the instituted claims were cancelled and 213 (31.14%) not cancelled.
    What is lacking is a valid comparison to the percentage outcomes of final D.C. appeal decisions of the Fed. Cir. on claims that were actually decided on a disputed issue of 103 based on patents or publications. [I.e. not decided on non-infringement, 101, 112, ambiguity, or some other issue not decidable in IPRs. This seems ripe for an academic study?

    1. 4.1

      This smells like a pandering attempt to not take that close look at the underlying Constitutional infirmity….

      (Gee Folks, this here thing really isn’t “that” bad)

      1. 4.1.1

        Whether good or bad, the only question that matters is whether an administrator can invalidate an issued patent for intellectual property.

        The obvious answer is no – however, the Court is moving very slowly.

        But for Scalia’s death, where do you think the Article III challenges would stand today?


            The “big ticket” cases are starting to look like bargaining chips in the SCOTUS v Senate contest.


              Well, don’t you know that SCOTUS always wins because they are above the Constitution…?

              (Not sure how high I should hold up this sarcasm sign…)

  3. 3

    OT, but the CAFC released a precedential 101 case a bit late in the morning: INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

    Dyk, Mayer, Stoll

    All claims were deemed ineligible (affirming the district court with respect to two case; reversing with respect to another). The only citation to McRo is in a footnote, where it’s cited along with a bunch of other cases in support of the bold proposition that “The Supreme Court and we have held that a wide variety of well-known and other activities constitute
    abstract ideas.”

    BASCOM, too, is kicked to the curb by the majority (nobody could have predicted!). The majority puts it this way:

    The claims here are also distinguishable from those in BASCOM, which allegedly improved an existing technological process by describing “how [a] particular arrangement of elements is a technical improvement over prior art ways of filtering [Internet] content,” i.e., “a filter implementation versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location.” 827 F.3d at 1350. There is
    not, in the ’050 patent, any “specific or limiting recitation of . . . improved computer technology,” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (Lourie, J., concurring), as the as the asserted claims describe only generic computer elements.
    (emphasis added).

    Stoll dissented with regard to the majority’s treatment of BASCOM.

    But check out Mayer’s concurrence:

    I write separately, however, to make two
    points: (1) patents constricting the essential channels of
    online communication run afoul of the First Amendment;

    and (2) claims directed to software implemented on a
    generic computer are categorically not eligible for patent.

    And so the curtains draw a bit closer on the farce.

    1. 3.1

      I hadn’t read Mayer’s concurrence when I wrote my blurb above. He gets into the subject in enough detail that I think he might have put himself in the history books, in a good way. Kudos.

    2. 3.2

      “The Supreme Court and we have held that a wide variety of well-known and other activities constitute abstract ideas.”

      Sigh…. yes, yes you have…. and you “held” them to be abstract BECAUSE they were allegedly “well known” in fact.

  4. 2

    Well, until Nancy Reagan mounted her high horse, a client secured “InstaRoach” for wired cigarette papers, used for “herbs.” Obvious PTO objections. But, the papers weren’t prohibited, although the mark suggested the slang for the butt end of a marijuana cigarette. Appellate case in point, while “Bud” was prohibited for beer, the malt could be legally sold. So, a soda fountain couldn’t use “Bud,” for its malt drinks during Prohibition.

    Scandalous words? Not when “Roaches Check in but They Don’t Check Out.” Roach Motel

    1. 2.1

      As I recall, the Federal Circuit expressly left any consideration of other types of impermissible marks recited in the act, e.g., “immoral” or “deceptive” marks, out of their decision.

      Presumably the CAFC’s reasoning in Tam would carry right over to “immoral” marks (the PTO won’t be able to prevent registration of those marks either).

      I’ve given examples before of the types of trademarks the PTO will be forced to register and publish if Tam is upheld. “Vile” is a kind term for them. “I went to the Supreme Court and all I got was a ——– from Justice Kennedy’s Daughter” on a T-shirt. That kind of wonderful stuff.

      But, hey, I guess we have to take extreme measures to protect consumers from being confused about the source of their goods. That is the purpose of trademarks, isn’t it?

      Two additional points:

      1) Given the amount of publicity generated for this case which is about a zillion times more than most cr@ppy bands ever get, presumably Tam has some substantial evidence showing that his awesome band name has successfully “taken back” the term “slants” from at least some of the racists out there. Soon references in the media to the “Slant Eye Community” will be normalized, all thanks to this unlistenable band’s brave and revolutionary stance!

      2) To the extent that the Constitutionality of the “immoral” clause also falls with the “disparaging” clause, the holding here would likely bleed into the utility and design patent statutes, correct? You can get patents on Santa Clause and non-disparaging Jesus figurines and dolls but what about racist figurines? There’s a nice article by some Wilmer Hale attorneys you can find here:

      link to google.com

      Justice Story might find all this very interesting …

      1. 2.1.2

        The world doesn’t end if you can’t, or decide not to register a trademark or even fail to obtain a patent. Ultimately, a federal district court will rule on common law or state trademark rights, say diversity, for a trademark refused registration on scandalous grounds.

        As, David P. Branfman stated in his timely article, “Growing Like a Weed – What Do Marijuana and Intellectual Property Have in Common? …” “Crafting a cannabis trademark application that will be approved by the Patent and Trademark Office has therefore become somewhat like an art form.” New Matter, V. 41, no.2, p.9

        It is a timely article, Ultimately, the market place needs some control and regulation, but it ain’t the end of the world if federal protection is not forthcoming. Randy’s InstaRoach, simply became “Randy’s” That was about forty years ago.

  5. 1

    Does this issue depend upon who is using the allegedly offensive mark? Or, does it mean that we all really do have free speech, including the right to be offensive?

    I think the Tam brief makes argues only for point 1. He alleges that his use is not disparaging, he says, because he is a member of the target minority for which the mark is disparaging and he is using it in a political way and for this reason, he argues, he has a right to register the mark regardless that if others, who are not within the target group, used it, it would be offensive.

    In some respects, Tam’s argument makes no sense. The examples given in his brief are highly offensive to many no matter who uses them and no matter for what purpose. Can we really get into the business of approving offensive speech only if it is political and the hearer from the particular messenger would understand it that way?

    Also, if the mark could be registered, could it be legally assigned to a group not within the target class of the disparagement?

    I thought we decided long ago that our right to speak included the right to be offensive, or is that only if we have a political message to convey? But who is to regulate PC? The PTO has no business to be in the business of regulating PC if the regulation of PC is unconstitutional. If the Court is not willing to go that far, TAM should not prevail.

      1. 1.1.1

        No, he should not prevail, anon. His position as a speaker from the targeted group should be given no weight at all. The question the PTO needs to look at is whether the mark is offensive to a group no matter who uses it or for what purpose. If it is offensive and disparaging, no registration.


          His position is more than that, Ned.

          That particular argument may not be the one to succeed, but his overall position does align with what appears that you want to succeed.


          That would really open up a can of worms. I would form a group and monitor TM applications, and then we could pick one and say we found it offensive and disparaging to our group. Havoc would then ensue.


            I would form a group and monitor TM applications, and then we could pick one and say we found it offensive and disparaging to our group. Havoc would then ensue.


            Because it’s imp0ssible for the law to deal with l0wlife pranksters like you. Simply imp0ssible! And there’s so many of you out there …


              Albeit “lowlife pranksters,” but what law specifically did you have in mind? Are you now going to outlaw (?) freedom of association?


          Why is registering an offensive mark a problem? Doesn’t registration tend to restrict the use of the mark? Doesn’t that mean we will see less of the offensive word or phrase than we otherwise would?

          I’m not sure, but wasn’t “Yankee” used in a disparaging way in the South at one time? Does that mean the boys in pinstripes shouldn’t be able to call themselves by that term and register it as a mark for the ultimate athletic entertainment?

          Tam wants to take ownership of a term and in so doing take the sting out of it. Why is that bad?


            Tam wants to take ownership of a term and in so doing take the sting out of it. Why is that bad?

            The “bad” comes from the fact that the purpose of trademarks is to prevent consumer confusion, not “taking the sting out of epithets.”

            Plus the fact that Tam has no zero evidence showing that trademark ownership will promote that goal. And he never will have that evidence.

            Doesn’t registration tend to restrict the use of the mark?

            Ask the people who trademarked “the golden arch.”


              The “bad” comes from the fact that the purpose of trademarks is to prevent consumer confusion, not “taking the sting out of epithets.”

              Well granting the trademark will prevent consumer confusion.

              My assumed motivation for selecting that particular mark has no bearing on that.

              So, there is no “Bad”.


              “The “bad” comes from the fact that the purpose of trademarks is to prevent consumer confusion, not “taking the sting out of epithets.””

              Um he’s using the trademark to prevent consumer confusion, he named his bands the slants to take the sting out of epithets.

    1. 1.2

      I think that McGinley was correct. No one’s free speech rights are infringed here. Mr. Tam is perfectly free to call his group “The Slants,” and no government power is trying to stop him. A trademark registration is not a pre-requisite to speech, and therefore a denial of registration is not an infringement on your right to speak.

      1. 1.2.1

        A trademark is a substantive right. If there is a law that reduces your “just compensation” in eminent domain cases if you are a member of the Catholic Church, that in no way prevents you from being in the Church. However, it is clearly unconstitutional under the 1st Amendment.


          I do not see the analogy. One can very well coerce someone into quitting a religion by depriving them of money. Indeed, such coercive techniques have frequently been used throughout history, so it is quite plausible that the First Amendment was intended to prevent just this sort of coercion. The reduction of one’s eminent domain payout is similar in kind to that sort of coercion, and differs only in degree.

          By contrast, the Slants are not even deprived of a trademark. They are only deprived of a trademark registration. This sort of denial does not coerce anyone. It is difficult to imagine Antiochus Epiphanes saying to the Maccabees “bow down to my idol or I will deny your trademark registration.” This simply is not coercive.


            For federal law, TM registration is necessary for enforcement actions so you have made a distinction without a difference.

            Since this is a patent blog, I’ll refer to section 284. We’re they to add a 4th paragraph that reads, “If the inventor is found to have been offensive, all damages shall be reduced to $1.” What result?


              I agree that the damages hypo looks more like a first amendment problem. There is very clearly an effort there to burden specific speech.


                Keep in mind that “burden” includes “chilling” and the earmark is simply the government basing discretion on expression (yes, even for business speech – and as noted below, even the “easier” test for business speech was NOT passed here).

                1. The problem is that there are cases on commercial speech and cases on government speech, and this case presents an intersection between the two. You are hanging your hat on the commercial speech line of cases, but you wave away the government speech case that was cited elsewhere on this thread on the basis of a rather meaningless distinction. Until you actually engage with the government speech cases, you are going to continue to miss the point.

                  The Slants are free to be as offensive and distasteful as they wish. They cannot, however, compel the government to join them in there exercise of bad taste. They want the government to print them a certificate with their disparaging speech that they can present in court and say “see, here is the government taking my side. The first amendment does not compel the government to do that.

                2. I do no such “waiving away.”

                  I merely present to you the pertinent points (and I distinguished the Texas Ranger aspect already).

                  As I said, Greg, this has been fleshed out in significant detail already.

                3. I distinguished the Texas Ranger aspect already.

                  You tried to distinguish it, yes. That is the occasion of waving away discussed above.

                  Yes, there are distinctions between license plates and trademark registrations. The mere naming of these distinctions is the shallowest possible “distinguishing” that one can do. It does not really settle the issue.

                  Perhaps this is all quite clear in your head, but until you lay it out in a logical fashion, you can hardly be surprised if good faith interlocutors remain unconvinced. Why do the distinctions between trademarks and license plates matter to the question of speech? Why is the government obliged to use its “letterhead,” so to speak, to publish a message that it does not wish to publish?

                4. That is not what a trademark registration is, it is government carrying out its function of protecting the public against unfair competition, unjust enrichment, etc. Publishing the Gazette is not necessary for the USPTO to grand a trademark applicant rights, it is something that the do because Congress made the policy decision that it is good for people to know what sort of marks exist that they shouldn’t be confusingly similar to.

                  The trademark recording, thus, is not government speech anymore than your country recording your deed, or PACER publishing your Motion for Summary Judgment. It is making public, for the protection of the public, another party’s speech in order to protect the public from the ramifications of not knowing such important information.

                5. The trademark recording, thus, is not government speech anymore than your country recording your deed, or PACER publishing your Motion for Summary Judgment.

                  Well, I expect that you are correct that the trademark register is not more government speech than the county deed registry. That said, I guess that the county deed registry looks equally like government speech to me.

                  That is to say, if I were to try to register my deed with “F— you, George Bush” in the text, I expect that the county clerk might well insist that I remove that bit before she would record it. I do not expect that I would get very far if I tried to use the first amendment to force her to register the deed with the expletive in there.

                6. Your “government is taking their side” is a silly straw man – you are the very first to present that argument.

                  Much as an attorney cannot be impugned to hold the beliefs of their clients, so too here.

                  You seem to be having a fundamental problem understanding the directive for the government NOT to be exercising ANY decision (or attribution of “acceptance”) based on content – that “hands off” goes BOTH for “saying no” as well as your straw man here of “we endorse.”

                7. Much as an attorney cannot be impugned to hold the beliefs of their clients, so too here.

                  That is essentially the same argument that the Sons of Confederate Veterans made in Walker. They lost. If you want to run with that, good luck to you.

                8. You do realize how easily that case is distinguished, and what I say IS black letter, right?

                  Man, this attempt of yours to be so PC is really messing with your ability to display any sense of rationality.

                9. You do realize how easily that case is distinguished…

                  I remember listening to the CAFC oral arguments a few months ago (regrettably I do not remember which case) and Judge Lourie asked a question about a certain case. The lawyer answered “your Honor, that case is distinguishable… .” Judge Lourie cut across him: “Counselor, of course it is distinguishable. Every case is distinguishable from every fact pattern that arrives in front of us. My job is not to say whether it can be distinguished, but whether it should be distinguished. I do not see a principled reason here why it should be distinguished.”

                  So, sure, you can distinguish Walker. The primary register is not literally the same thing as a license plate. The argument by analogy that “a lawyer’s expression of his client’s views are not the same as the lawyer’s views,” however, works the same way when the analogy is made to the register as it works when the analogy is made the license plate. Once again, I do not see what is gained by making an argument that one knows in advance to be a losing argument.

      2. 1.2.2

        I think Walker v. Texas Ranger Division is also informative here, although the government’s interest in a license plate is arguably stronger than its interest in a trademark registration.


          Informative – but very limited, Apotu.

          Think about it – does the government enforce the trademarks of companies? If you try to draw too much of a parallel with the government “owned” license plates, you run into serious disconnects very quickly.


            The government prints license plates. The government prints trademark registration certificates. In both instances, someone is trying to make the government print something on its own “letterhead,” so to speak, that the government does not wish to say.


              You forget to address the enforcement difference.

              Again, Greg, this has been hashed out already. Please catch up and stop making comments that have already been dealt with.


                You forget to address the enforcement difference.

                Fair enough. I suppose I would turn it around and ask why the enforcement point matters to the first amendment analysis? All the “speech” at issue is already “spoken” well before the enforcement comes to a head. As soon as the license plate is stamped or the registration certificate is posted on the PTO website, the government has been compelled to “speak” a message that it does not want to say. Everything after that is just superfluous to that point, so it is not clear to me why the enforcement question really matters in the present dispute.

                1. Already answered – come on Greg, read the past comments already.

                  In a nutshell: the government has established a valuable right.

                  The government then conditions that right based on their judgement of content.

                  This induces chilling based on content.

                  Again, for the (rather obvious reason of PC correctness), your critical reasoning abilities seem to have gone dormant.

                2. come on Greg, read the past comments already.

                  I have.

                  In a nutshell: the government has established a valuable right. The government then conditions that right based on their judgement of content. This induces chilling based on content.

                  How does that have anything to do with enforcement. You are not responding to my argument. You are talking past it. As noted above, you are making a commercial speech argument. Fine. For aught I know, if this case presented only a commercial speech question, your argument would be entirely sound.

                  However, there is more than just a commercial speech question at stake. You do yourself no service by declining to engage the government speech angle here.

                3. You comment on form, but I see NO substance to your own “assertion” of government speech (oops).

                  And as I have already mentioned several times now, Greg – go through the past discussions.

                  Then feel free to comment on the form here.

                  As it is, you are way behind (and apparently getting more and more behind).


                Sept 30 @ 10:35 a.m. “Your ‘government is taking their side’ is a silly straw man – you are the very first to present that argument,” (emphasis added).

                Sept 30 @ 10:45 a.m. “Please catch up and stop making comments that have already been dealt with.”

                Er, which is it? Did you already vanquish my argument on the other thread (I read carefully and did not see it, but perhaps you can point out a citation), or is this the first time you have encountered an argument as silly as mine?

                Are you even reading what you write before you hit “post”?

                1. The really beautiful part is that you did not post anything between 10:35 and 10:45, so you cannot even pretend that by the time you wrote the “already dealt with” comment, that you had dealt with the argument elsewhere on this thread.

                2. My discussions have already come and thise discussions already answer the issues you are trying to invoke with your now first time presented strawman.

                  Greg – your level of being obtuse is growing.

                3. And the real beautiful part is that you are likely to play the role of the obtuse person and “not understand” this clear explanation.


      3. 1.2.3


        I recommend you view the Patently-O link in the story above and read the comments – this issue has been threshed out in quite some detail.

        One highlight:

        The underlying point – the critical point – remains that of one of selective government action based on the related expressive content.

        When one recognizes that even commercial speech has First Amendment protections, and the majority here do recognize this and state that ANY and ALL levels of First Amendment scrutiny are NOT met here, then one must recognize – even in the face of the supposed harm – and ESPECIALLY given our Voltaire type of “may not like what you say, but will die to give you the right to say it” protection AGAINST State Nannyism of this “politically correct” attempt to control the particularly selected expressive content, that any “feelings” cannot be allowed to overcome the rights to BE offensive.


          Nobody’s right to be offensive is burdened by the Lanham Act. The Slants are as free to be as offensive as they wish. Possessing a registration would not make them a whit more offensive.


            You are quite missing the point Greg, as even business communication has some first amendment protection.

            Again – I suggest that you take the time to read the past comments on this matter. I will presume that you have so informed yourself in my replies to you.


            The question isn’t whether or not The Slants or anyone else get to be offensive per se – no one is questioning that they can be, and that they’re free to use the mark, and to even try to bring an infringement action based on an unregistered mark (aka “passing off”). The question is whether or not the US government, i.e. the PTO, gets to be arbitrarily selective in who it gives TM registrations to (with all the attendant advantages) based on an amorphous “offensive” standard.


              The question isn’t whether or not The Slants or anyone else get to be offensive…

              It isn’t? That’s good. How, then is this a first amendment question? I have missed the portion of the first amendment that talks about distributing government benefits. I see a mention of speech, however. If we are all agreed that the Slants get to make whatever offensive speech that they want to make, what else is there to discuss?


                Greg, you are being obtuse.

                The government has created a right.

                At that point, the government cannot distinguish who gets the right and who does not based on expressive content.

                Your attempts to blindly follow your “beliefs” are really cutting into your reasoning capabilities.

                1. Your attempts to blindly follow your “beliefs” are really cutting into your reasoning capabilities.

                  Huh? What “beliefs” are you talking about?

                2. It is clear that you have been influenced by the same considerations of content that must be guarded against from the government conditioning a valuable right based on that selfsame content.

                3. Did you draw slips of paper out of hat to assemble that response? None of it makes any sense.

                  I grant that it happens to be grammatically parseable, but it appears entire devoid of any actual substantive content in relation to the rest of the conversation.

                4. It makes perfect sense – pretending to not understand f001s no one.

                  You too have an issue with the content and thus you are going to ridiculous extremes to find some reason why a content-based, government decision on a valuable right is something other than what it plainly is.


                “How, then is this a first amendment question?” I don’t know how it’s a first amendment question (I confess, I haven’t read the CAFC decision saying it’s a first amendment question), but then I didn’t say it’s a first amendment question, that’s what the CAFC and Tam’s lawyers are asserting. *I* said that the problem is having the federal government doling out trademark registrations based on an arbitrary “offensive” standard. And that IS the problem. Whether or not that’s a 1st amendment issue is, apparently, something for the Supremes to decide.

                1. Ah, I see. So you do not necessarily contend that the statute is unenforceable as written. You merely would prefer that Congress amend 15 U.S.C. §1052(a) act to remove the “disparage” obstacle to registration?

                  Fair enough. I am not particularly exercised by the presence of this registration bar in the act, but neither would I be particularly disappointed if Congress were to remove it. My only point is that there is no first amendment infirmity if Congress chooses to leave the “disparage” obstacle in title 15.

                2. A rather weak conclusory statement Greg. You clearly have not caught up on all of the prior discussions.


            Greg is too quick to say “no burden,” as he has not addressed the chilling aspect of the state-imposed selectiveness of valuable trademark rights based onexpression.

            The presence of additional rights is a red herring.


              Greg… has not addressed the chilling aspect of the state-imposed selectiveness of valuable trademark rights based on expression.

              I cheerfully concede that the restriction at issue is based on the content of the speech. That really is not the nexus of the disagreement. If “content based” were the only element to be proven, I would concede the accuracy of your conclusion. Once again, however, this mark is going to appear on government “letterhead,” and therefore the government speech doctrine throws a complication into your analysis that you have not considered thoroughly.


                Not sure ho w I missed this the first time (or maybe my comment was removed). But this is clearly not within the realm of government speech.

                I provided an example previously of court captions “bearing the letterhead.”

                That “bearing” simply is NOT enough to make it speech of the government as that term is understood in law.

                Further, the enforcement paradigm and the “it’s government speech” are not congruent. Again – this has been developed in past comments,

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