There’s No Such Thing as a Content Based Unconstitutional Condition

I asked my former student Zachary Kasnetz to write this post on his forthcoming article explaining the Federal Circuit’s errors in its en banc Tam decision. A draft version of his article is available online: ssrn.com/abstract=2864016. – DC

By Zachary Kasnetz

I would like to thank Professor Crouch for this opportunity to share my views on the Federal Circuit’s decision in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), in advance of the Missouri Law Review’s publication of my article.  This post discusses some of the arguments I make as to why the court erred in holding Section 2(a) of the Lanham Act facially unconstitutional.

Section 2(a) of the Lanham Act prohibits registration of any mark that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”  15 U.S.C. 1052(a).  It has long been controversial and commentators have largely  agreed that it is unconstitutional.  See In re Tam, 808 F.3d at 1334 n.4 (citing commentary).  Tam held: (1) Section 2(a) was a content-based and view-point based restriction on speech; (2) it regulated the expressive, not commercial aspects of Tam’s mark; (3) it actually regulated speech; (4) registration was not a subsidy or government speech; and (4) could not pass strict or intermediate scrutiny.  The holding and reasoning are flawed regarding the numbers 1, 2, and 4.[1]

First, the Court reasoned backwards.  First, the court should have decided whether Section 2(a) actually regulated speech at all and then whether it was a government speech or a subsidy.  If the answer to that question was no, then whether Section 2(a) was content and viewpoint-based and whether it impacted the commercial or expressive aspects of Tam’s mark would have been irrelevant.  Government speech and subsidies are not “exempt” from First Amendment scrutiny as the majority claims: they don’t implicate the First Amendment at all because they do not abridge any speech.  See Rust v. Sullivan, 500 U.S. 173, 193 (1991); Pleasant Grove v. Summum, 555 U.S. 460, 467 (2008).

Second, Section 2(a) only impacts the commercial aspects of Tam’s speech because a trademark is “a form of commercial speech and nothing more.”  In re Tam, 808 F.3d at 1376 (Reyna, J., dissenting) (quoting Friedman v. Rogers, 440 U.S. 1 (1979)).  All benefits of registration are commercial in nature, i.e., they make it easier to enforce the mark.  Registration has no impact on Tam’s ability to express any ideas or messages.  Cf. Author’s League of Am. v. Oman, 790 F.2d 220, 223 (2d Cir. 1986).  As Judge Reyna dryly pointed, the majority held that “Mr. Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Mr. Tam.”  Id. at 1378.  There is no First Amendment right to government assistance in preventing others from expressing ideas or views.  Cf. Davenport v. Wash. Educ. Ass’n, 551 U.S. 177, 188-90 (2008).

Therefore, the only basis for the majority’s opinion is the unconstitutional conditions doctrine, under which the government may not condition an important benefit on the surrender of an important constitutional right, even if it could withhold the benefit entirely.  The doctrine is notoriously incoherent and inconsistent in its application.  Tam’s basic holding is that Section 2(a) is an unconstitutional condition because it is a content and viewpoint based regulation/restriction/burden on speech.  But there’s no such thing as a content-based unconstitutional condition.

A condition’s constitutional permissibility turns on the relationship between the condition and the government program at issue.  See, e.g., USAID v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321, 2329 (2013).  The more “germane”, i.e., reasonably related to the goals of program, a condition is, the more likely it is to be constitutional.  See Sullivan, Unconstitutional Conditions, 102 Harv. L. Rev. 1413, 1420-21 (1989).  Any condition on a government benefit or participation in a government program implicating the First Amendment necessarily draws content-based distinctions: the question is whether that distinction is reasonably related to the program’s goals.  According to the majority, the goals of federal trademark law are (1) protecting the rights of mark holders and (2) preventing consumer deception and confusion.  If we accept that this is correct, the constitutionality of Section 2(a) turns on its relation to those goals.  The majority believes it is “completely untethered” those purposes.  In re Tam, 808 F.3d at 1354.  I disagree.

Trademarks allow consumers to quickly identify the source and quality of goods or services.  Therefore, trademark law conditions registration on a mark meeting certain requirements, including that it not be disparaging.  Certain kinds of marks are better at this than others, lying across the spectrum of distinctiveness from arbitrary or fanciful to generic.  Given the massive amount of information bombarding consumers, I argue that marks communicating other information or messages are less effective.  The government has an interest in ensuring that “the stream of commercial information flows cleanly as well as freely.”  Va. Bd. of Pharmacy v. Va. Citizen’s Consumer Council, Inc., 425 U.S. 758, 771–72 (1976)).  Disparaging marks, by definition, communicate more than the source and quality the good or service they attach to.  By denying the benefits of federal registration, Section 2(a) mildly incentivizes the selection of more effective marks.  Thus, it is reasonably related to trademark law’s goals.  Moreover, it only likely affects the choice of marks: it is not trying to “leverage [a government benefit] to regulate speech outside of the program itself.”  USAID v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. at 2329 (2013).

Trademark law draws many distinctions between different marks based on their content.  As a far as I know, the constitutionality of the ban on registering trademarks containing “the flag or coat of arms of the United States, or of any State or municipality, or of any foreign nation,” 15 U.S.C. § 1052(b), has never been questioned.  Nor has the ban on those containing “a name, portrait, or signature identifying a particular living individual . . , or the name, signature, or portrait of a deceased President of the United States during the life of his widow, . .”  Id. at § 1052(c).  The government has never been required to show that such marks would actually be confusing or insufficiently distinctive despite the fact that this provision obviously singles out a category of potential trademarks based solely on their content.

Does Section 2(a) Actually Impact Speech?

I am also extremely skeptical that denying registration to disparaging marks actually has a chilling effect on speech.  The majority fears that Section 2(a) chills potential selection of disparaging marks, but the real issue isn’t whether trademark choice is being affected, but whether “ideas or viewpoints” will be suppressed.  Simon & Schuster v. Members of N.Y. State Crime Victims Bd., 502 U.S. 105, 116 (1991).  But trademarks are “commercial speech and nothing more.”  Friedman v. Rogers, 447 U.S. at 562.  Consider Tam.  If he had known that there was a real possibility that he would have been unable to register THE SLANTS because it was disparaging he would have chosen not to create his music or would not have made music intended to express pride in his Asian heritage?  I doubt it and I have not seen any evidence to support such a claim.  Perhaps he would have chosen a different name for his band, but again I’m skeptical.  Thus, Section 2(a) is “exceedingly unlikely” to suppress or chill expression of any ideas and viewpoints.  See Lyng v. Int’l Union, UAW, 485 U.S. 360, 365 (1988).

= = = = =

The author is an Associate at Growe Eisen Karlen Eilerts in St. Louis.  He earned his J.D. from the University of Missouri in May 2016 and his B.A. from the University of Maryland in 2012.

[1] Assuming arguendo, that I am wrong about numbers 1, 2, and 4, I agree that Section 2(a) could not pass strict or intermediate scrutiny.  I also agree that placement on the register does not turn Tam’s purportedly disparaging message into government speech.

110 thoughts on “There’s No Such Thing as a Content Based Unconstitutional Condition

  1. The author writes:

    “Therefore, the only basis for the majority’s opinion is the unconstitutional conditions doctrine, under which the government may not condition an important benefit on the surrender of an important constitutional right, even if it could withhold the benefit entirely. The doctrine is notoriously incoherent and inconsistent in its application.”

    However, the unconstitutional conditions doctrine is an essential part of the First Amendment. While it is important that the Editors of the NY Times are not jailed for speech and injunctions are not placed against them, it is nearly as important that they also do not lose Social Security benefits for their speech, they aren’t subject to heightened IRS and DOJ scrutiny, and NBC News doesn’t have its FCC license revoked because of it. Although the author mildly touches on why he believes the mark’s offensiveness may reduce its distinctness, there is no evidence in the record for this, and even if true is only a mild push in favor of the policy because the government does not have a compelling or even important interest in defending the sensibilities of its citizens.

    1. the government does not have a compelling or even important interest in defending the sensibilities of its citizens.

      That’s certainly not what the Supremes said in FCC v. Pacifica. After all, we mustn’t forget about the children. Or super sensitive people who happen to be near a radio or TV that’s receiving a broadcast signal.

      link to en.wikipedia.org

      But again: there are no “speech restrictions” at issue here. This is about trademark registration. Regardless of the outcome of the case, Tam remains absolutely free to call himself a “slant”, he’s free to call his band the “slants” and, he’s free to call all his Asian-American friends (and enemies) “slants”. He doesn’t even need to have a reason.

      1. Your “no speech” is not correct as even business speech has some First Amendment protections (as you have been informed previously).

      2. He is as free to call his band the slants as you are to post here…if everytime you posted cost you 10℅ of your salary and life savings.

  2. Me: You seem to be troubled by the government suggesting that it doesn’t need to participate in the promotion of that reality [i.e., a world where “The G0 0ks” and other disparaging names are registered trademarks].

    Simon Tam: I’m sorry, I don’t know what you mean by this. What reality is the government promoting?

    At this point, it’s the reality that you are promoting, Simon, with your Supreme Court case. I totally support the idea of minimizing the impact of disparaging anti-Asian terms and discrimination of that sort generally. I just find it odd — to say the least — that you choose to achieve this goal (at a presumably non-trivial expense) by “opening the door” (your own words) to the consciousness-swamping success of businesses/”artists” who are using the most offensive and discriminatory language possible.

    There seems to be a great effort being made on your part to establish that this isn’t just a marketing gimmick (when it surely is) and that it’s not about you (when it surely is).

    I’ll add that the guaranteed downside to your possible success in this matter (i.e., expanding government registerable trademarks to include immoral, obscene, and disparaging marks) is a bit more frightening when we have a substantial fraction of this country foaming at the mouth to marginalize anyone who isn’t white (or orange). Do those people need bigger megaphones? They need the government’s help — in the form of registered trademarks — to get their awesome message out? Really?

  3. also agree that placement on the register does not turn Tam’s purportedly disparaging message into government speech.

    I rather wish that the author had unpacked this though a little more. The bulk of the government’s cert petition was given over to the government speech aspect of this case, so the fact that the SCotUS took cert would appear to indicate that they consider this aspect of the case interesting. A single sentence dismissing the argument hardly seems to do justice to the topic.

    1. Alas Greg, I have seen no justice given to the notion that a Trademark is government speech even though far more than just a few sentences have been put forth claiming so.

  4. Nice article, Zachary, and an excellent example of legal writing that clearly and concisely focuses on the point to be made.

    1. Zachary Kasnetz argues, “All benefits of registration are commercial in nature, i.e., they make it easier to enforce the mark. Registration has no impact on Tam’s ability to express any ideas or messages.” He argues that the speaker is not *prohibited* or *restricted* from speaking.

      The same could be equally said about copyright. All benefits of copyright *registration* are commercial in nature; they make it easier to enforce the copyright. There is no requirement to have a copyright at all to publicize one’s ideas, viewpoints, or even the expression thereof; it is only valuable if you wish to be commercially successful in so doing.

      Would disallowing copyright registration for “offensive” works past 1st Amendment muster? Of course not. Do trademarks express messages? Of course they do. What, then, is Congress’s excuse for disadvantaging enforcement of those trademarks (or copyrights) for which it disagrees with the associated message?

      As Mr. Kasnetz agrees that section 2(a) would not pass intermediate scrutiny either, the characterization of trademark registration as “commercial” speech or not is a red herring. Either way, section 2(a) is a regulation that purposely disadvantages some speech, based purely on its content.

      I respectfully disagree with this article.

      1. ypo: regulation that purposely disadvantages some speech, based purely on its content.

        If this bothers, you’ve got a lot of work to do.

        There is no requirement to have a copyright at all to publicize one’s ideas, viewpoints, or even the expression thereof

        You’re right! Federal copyright, patent and trademark laws exist at the whim of Congress.

        it is only valuable if you wish to be commercially successful in so doing.

        And even then, you can be commercially successful without the government stepping in to help you protect your expressions.

        Do trademarks express messages? Of course they do.

        But trademarks don’t exist to protect and promote content expression. That’s why we have copyrights. Trademarks exist to prevent unfair competition. This is a key distinction and Kasnetz did address it. The issue is whether the government has an interest in promoting trademarks that aren’t disparaging (or obscene, or scandalous). I think pretty much everybody thinks the answer to that question is “yes”. Now, whether the existing law is sufficiently clear about how that interest is achieved is another question.

        But, seriously, the idea that the government can’t restrict what you can register as a trademark “because free speech!” is ridiculous on its face. At least try to remember that registered trademarks represent a diminishment of everybody’s right to express themselves. I know that’s hard for certain self-interested legal professionals to remember …

        1. But, seriously, the idea that the government can’t restrict what you can register as a trademark “because free speech!” is ridiculous on its face.

          Says the guy who clamors about the First Amendment and utility patents….?

          1. Your inability to understand the issues is noted, “anon.”

            Also totally predictable.

            Just tell everybody, “anon”: does the First Amendment apply to the patent system? You apparently believe that it applies to Trademarks.

            Now let’s watch “anon” do his little song and dance. Because he’s a totally serious person. Sure he is.

              1. Go ahead and break down for everyone exactly what you think you understand, “anon.” Explain “the irony” or whatever it is you think you’ve stumbled upon. Use plain English. Try for a complete paragraph. Go for it.

                1. Again – I am not the one that needs to “break down” anything.

                  I say “no thanks” to your Br’er Rabbit invitation.

        2. My “ah-ha” moment – this is the first time I appreciated that the USPTO’s case could be characterized as protecting free speech for the public by denying the trademark registration to Tam. An interesting viewpoint.

          1. mike,

            The trademark only limits others for the mark in conjunction with the registered items/service – exactly like all other marks (quite divorced from the disparaging point in the cross hairs).

            Your “ah ha” moment is in vain.

        3. MM: The issue is whether the government has an interest in promoting trademarks that aren’t disparaging (or obscene, or scandalous).

          I would say that the issue is whether the government has an interested in not promoting disparaging marks.

          1. There is NO government promotion here Ned.

            The service of listing the marks OF others cannot be confused with sponsership of any kind – or any voice BY the government AS a government. There is expressly no government ownership of ANY mark.

      2. your poster, but there is that TM or (R) that implies government endorsement of the disparagement.

        Copyright is a bad analogy, because we do not copyright short phrases, but larger works.

  5. I think the bit about registration impacting the choice of his band’s name is at the heart of this. The bands music is marketed with the name and the choice of name for a business is a form of expression, especially in this particular field since it serves not only to identify the source of its product, but also the character of the enterprise. Prohibiting registration does pressure the band to change its name. Imagine trying to market your business without being able to reserve rights over use of its name. Thats the situation Tam found himself in and I think we shouldnt be so skeptical of the impact. It sounds like this article is being unwittingly dismissive of Tam’s perspective.
    Also, NWA has a trademark. It seems an overly technical double standard is being applied.

    1. NWA has a trademark

      So?

      Prohibiting registration does pressure the band to change its name.

      It’s true. Prohibiting the registration of marks such as “Alito and the Pantie Searchers” or “The Greasy Scalias” will pressure certain bands to come up with different names (99.99% of bands could care less — ask me how I know).

      So what? Is there a limited number of band names to choose from? The last time I checked it was close to infinitely large.

      And it goes without saying that these registration restrictions have zero effect on one’s ability to express oneself, which is what the First Amendment is about.

      And just for the record: this guy and his unlistenable band and their unfunny gimmicky name have done absolutely squat to diminish the use or impact of any anti-Asian epithets, and that’s taking into account the fact that he’s gotten more press from this case in two years then he otherwise would have gotten in his entire talentless lifetime.

  6. “Consider Tam. If he had known that there was a real possibility that he would have been unable to register THE SLANTS because it was disparaging he would have chosen not to create his music or would not have made music intended to express pride in his Asian heritage? I doubt it and I have not seen any evidence to support such a claim. Perhaps he would have chosen a different name for his band, but again I’m skeptical. ”

    Hi,

    This is Simon Tam of The Slants weighing in here. Our legal briefs speak for themselves so I won’t worry about the discussion there but I wanted to address this elephant in the room since many people make this assumption without having a keen understanding of the music industry nor of my intentions.

    1) Artists are often wary of names that aren’t able to receive a TM registration and will usually change their names early in the career if needed. That’s because so many licensing agencies and record companies will refuse to sign with an artist who cannot protect their brand. One of the most popular examples was an artist called “Destiny,” who loved their name…but their record label forced them to change it to be able to get a TM registration (not for 2a reasons, but more because it was too generic). They changed it to become “Destiny’s Child,” and from that, Beyonce’s ‘destiny’ was born.

    2) We don’t make music about our “Asian heritage,” we have a platform for Asian American identity. It’s an important difference since “Asian American” is a distinctly political identity, one that addresses a unique set of issues. But that’s the reason why we chose the name “The Slants,” to talk about our “slant” in life as people of color. Slant itself is an inherently neutral term that should have never been considered a racial slur by the USPTO. I discuss that point repeatedly on our website, in numerous interviews, and in 3 TED talks about the subject.

    People often like to talk about “evidence” but don’t actually go looking for it. For example, several independent national surveys were conducted to father Asian Pacific Islanders’ views on our name and found that 92-98% support our use of it and do not find “The Slants” to be disparaging. Numerous linguistics and dictionary experts have weighed in on it as well. If we were to actually look at the evidentiary record of this case, you’d find that the crux of our arguments actually were on the procedural and evidentiary issues of the USPTO, not free speech – the original brief filed with the USPTO/TTAB/CAFC never once stated that we were “reappropriating” the term, ‘slant.’ That only appeared in Judge Moore’s “Additional Views” and became a part of the discussion from the en banc hearing since then. Not that these latter points matter where the case is now, but I think it’s important to provide accurate context for what we’re discussing here.

    I’m always happy to discuss if there are any further questions on the case/our band.

    1. Simon, thanks for these remarks. They helped me a lot in considering this issue.

      What struck me was your point that

      We don’t make music about our “Asian heritage,” we have a platform for Asian American identity. It’s an important difference since “Asian American” is a distinctly political identity, one that addresses a unique set of issues. But that’s the reason why we chose the name “The Slants,” to talk about our “slant” in life as people of color. Slant itself is an inherently neutral term that should have never been considered a racial slur by the USPTO.

      You then provide evidence to back this up — Asians do not consider the term to be offensive.

      Based on this, you should have won in the PTO. I have no idea how you lost, except to think that some in the PTO are on a PC high and take offense easily.

      But the fact that they did deny you registration for a mark that most in the target community do not consider to be offensive gives me pause.

        1. anon, Huh? It is?

          How does one decide if a mark is disparaging except upon evidence. What evidence? If the target community does not consider the mark offensive, is this not enough?

          1. For whatever little my opinion is worth, I am not sure that it should be enough that the putatively-disparaged group purports not to find a term offensive. The fact that the putatively-disparaged group does find a term offensive should be enough to establish that the term is offensive, but even if the group in question does not find a given term offensive, it should also be necessary to establish that the nation as a whole also finds the term not offensive.

            To give an example, if it turns out that a majority of Native Americans find “redskin” offensive, then that should be enough to make “redskin” unregisterable. Even if, however, 99% of Native Americans purport to find “redskin” anodyne, if it turns out that 60% of the U.S. population as a whole consider “redskin” to be a disparaging term, then it should still be unregisterable, the indifference of Native Americans notwithstanding.

            1. Greg, Huh? This makes no sense. All you are saying is that a group of PC police an make the call regardless of evidence. The country might be split 50-50 on the issue. Do we ban the mark?

              This truly is scary, Greg.

              Another thing, who makes terms offensive? “Negro” is the proper term to for natives of Africa. Is this term now offensive? “Indian” is the English word for natives of America. Is this word offensive? “Mrs.” once was the proper name of a married woman. Use it now, an one gets slapped.

              The world of the PC police is bizarre, Greg. It is the extremes to which they go that worries me. The PC police wield their club for political purposes. Only one point of view is accepted. Other points of view are demonized. This is truth.

            2. Greg, Huh? This makes no sense. All you are saying is that a group of PC police an make the call regardless of evidence. The country might be split 50-50 on the issue. Do we ban the mark?

              This truly is scary, Greg.

              Another thing, who makes terms offensive? “N*gro” is the proper term to for natives of Africa. Is this term now offensive? “Indian” is the English word for natives of America. Is this word offensive? “Mrs.” once was the proper name of a married woman. Use it now, an one gets slapped.

              The world of the PC police is bizarre, Greg. It is the extremes to which they go that worries me. The PC police wield their club for political purposes. Only one point of view is accepted. Other points of view are demonized. This is truth.

                1. This is not an argument that I care to pursue with any vigor, but my wife is from Africa, and our household does not consider that the term in question is the “proper” way to describe her. I would submit that it really is not a polite word any more, regardless of its once-anodyne character, and notwithstanding the UNCF.

                2. “Feelings” are what you seem to want to rest on, Greg.

                  “Polite” or not should not be the driver – leastwise in the US, given our historical appreciation of the “right to offend.”

              1. Nobody’s “demonizing” anything.

                We’re talking about the government registering disparaging trademarks, regardless of who’s being disparaged.

                Friendly reminder: this isn’t the only content-related provision in Section 2(a). And none of the provisions prevent you from talking about whatever you want to talk about. Feel free! Let it all out.

                1. MM, I fundamentally agree that we should not be registering disparaging marks. What I was discussing with Greg what evidence is necessary to prove that a mark is disparaging.

                2. On what bases is this “fundamental” aversion to legally constrict “being offended” based on Ned?

                  How is that (in ANY way) different than the Political Correctness you seem to distance yourself from (out of one side of your mouth, while appearing to kowtow to that same political correctness out of the other side of your mouth)…?

                3. Like it or not, anon, putting a TM aside disparaging remark would imply the government’s endorsement.

              2. All you are saying is that a group of PC police an make the call regardless of evidence. The country might be split 50-50 on the issue. Do we ban the mark?

                I do not know where in my post you found the invocation of a “PC police.” I said that (1) the putatively disparaged community and (2) the U.S. population as a whole are the two relevant communities whose sensibilities determine whether a mark is “disparaging.” I certainly agree that we cannot give a heckler’s veto to (3) any old sub-group that might please to pop up and cry “well we’re offended…”

                As for the circumstance where the nation splits 50/50, yes, I would deny that mark registration on the primary register. I would quibble with the characterization of this registration-denial as “banning” the mark. No one is talking about banning marks. One should be free to use disparaging marks. A ban really would violate the first amendment. The refusal of the government to publish the mark on its prestige “letterhead,” however, is not anything close to a ban.

            3. In other words, if white people (read: white women) find “redskins” to be offensive to native americans (read: on behalf of native americans), who themselves aren’t offended by the term, then it should be deemed offensive. You know, because white professional victim monger women said so. Is that what you’re saying Greg?

              1. I actually saw today someone seriously trying to say that any protest vote for Bernie Sanders or even the Libertarian candidate was an exercise of “White Privilege.”

                Scary how brainwashed some PC folk are.

                1. “was an exercise of “White Privilege.””

                  It is. If you know what the term means, you’ll understand why it is. But I can explain to you why if you need help.

                  That being said, do not shirk and denounce those titles bestowed upon you anon, do not cower in guilt from women’s shame tactics (yes the feminazi “gender studies” people came up with the term to “analyze” and ultimately used it shame white people). Just because someone puts a name on a thing which exists that sounds fancy and hoity toity doesn’t mean it isn’t Gr8. Bask in the “privilege” just as surely as you’d bask in “rich privilege” if you’d had it. Be proud that your father, grandfather etc. on back worked their as off to build and protect a nation so that you could have that priv regardless of whether or not other people’s parents did or were even afforded the opportunity to. Afford others the same opportunity to do so for their kids and let that be that. The “fairness” po po will come whhhhaaaambulancing in, but do not pay them mind, all they want to do is rob your grandparents and other people’s grandparents after the fact for their “sins” (read: them being nicer and more generous to “minorities” read: “majorities on the earth”, than pretty much anyone on the face of the planet even though still shty) and guilt monger. If you want to have fun, remind them that them coining and using the term “white priv” is itself “white priv” lol.

                2. “was an exercise of “White Privilege.””

                  It is. By their own defining the term and what it means into existence. If you know what the term means, you’ll understand why it is. But I can explain to you why if you need help.

                3. “Defining the term” does not “bring it into existence.”

                  Saying black is white does not make it so.

          2. Anyone can be “disparaged” by anything.

            Just form a “new group” concerning any particular (and especially PC-related) thing, and you can guarantee that a “target group” that will be “disparaged” can be formed.

            In the best Orwellian tradition, we can even appoint a government body to do this and call it the “Freedom from All Disparagement But What We Call Disparagement” group, led by some Liberal PC minded “save the children in the fields of rye” zeal0t.

      1. Hi,

        We provided plenty of evidence (see our first application which based on reappropriation/the traditional method of challenging a Section 2(a) refusal), including:

        – An expert report by a linguistics expert on the history/current use of the term “slant:” link to theslants.com

        – An independent, national survey of Asian Americans on whether or not “slant” is considered disparaging: link to theslants.com

        – A legal declaration from a committee member of the Asian American Youth Leadership Conference, an event that the USPTO claimed to cancel our concert due to outrage over our name (they did not. In fact, performed there the year after, and I keynoted 3 times): link to theslants.com

        We also sent about a dozen other legal declarations and about 20 media stories from Asian American media, too. We provided more evidence than any other case in history…but no one has ever won against a charge under a 2(a). When having discussions with the examining attorney, we were told that they were just following instructions, it came from above them.

    2. Tam: Slant itself is an inherently neutral term that should have never been considered a racial slur by the USPTO.

      This, of course, is a completely different argument than the one being made to the Supreme Court. In my opinion, it’s a much better argument.

      If we were to actually look at the evidentiary record of this case, you’d find that the crux of our arguments actually were on the procedural and evidentiary issues of the USPTO, not free speech

      But you did make the free speech argument.

      that’s the reason why we chose the name “The Slants,” to talk about our “slant” in life as people of color.

      LOL Whatever you say, Simon. Last time I checked, someone was out there promoting your act as the “first all-Asian American dance rock band.” And the last time I checked, you can talk about your “slant” in life until the cows come home, regardless of what you call your band.

      Artists are often wary of names that aren’t able to receive a TM registration and will usually change their names early in the career if needed. That’s because so many licensing agencies and record companies will refuse to sign with an artist who cannot protect their brand.

      So … why do we want disparaging marks to be registerable? Because licensing agencies will be able to sign artists with disparaging marks, which is totally awesome because … why?

      They changed it to become “Destiny’s Child,” and from that, Beyonce’s ‘destiny’ was born.

      As you are probably aware, this fact does not help your cause. Beyonce’s “destiny” had little or nothing to do with her band’s name. That’s true of pretty much every enormously popular artist, with the major exceptions being bands that are hoping to “make it” based on factors unrelated to musical creativity and/or talent (you know, gimmicky factors like attention-seeking names and being “the first all-MENSA metal band in Leavenworth!”).

      1. “This, of course, is a completely different argument than the one being made to the Supreme Court. In my opinion, it’s a much better argument.”

        This was our original argument (see entire case record leading to CAFC). But once the CAFC issued their Sua Sponte Order to Vacate, they narrowed its scope of whether or not 2(a) violates the First Amendment (which is of course, much different than whether or not the USPTO falsely determined it was disparaging). We didn’t make the free speech argument until the CAFC.

        “LOL Whatever you say, Simon. Last time I checked, someone was out there promoting your act as the “first all-Asian American dance rock band.””

        Well, we’ve been saying it for 10 years now – we choose the name to talk about our “slant” on life as Asian Americans, that it pays homage to our musical geekery (slant guitar chords), and to address the false stereotype that all Asians shared slanted eyes. Like most things in art, it has many meanings.

        “So … why do we want disparaging marks to be registerable?”

        I think that’s the wrong question here. Why need to instead think, “what does disparaging actually mean?” And, why do we even have a seemingly random disparagement clause in the Lanham Act when it’s mostly about commercial/procedures? Why don’t we apply “disparagement” to copyright or morality on the types of devices that can receive a patent?

        “As you are probably aware, this fact does not help your cause. Beyonce’s “destiny” had little or nothing to do with her band’s name. ”

        That ‘destiny’ referred to above was a pun about her career, not the act itself. Without the name change that allowed a TM registration, she would not have been signed or receive critical deals which opened up doors for her. While I would love to believe that a “rose by any other name” is a true concept in the music industry and that it is solely about talent, unfortunately, that’s simply untrue.

        1. Simon, you are conversing with Malcolm Mooney.

          Do not expect much (if anything else but venom and ad hominem – that has been his trademark here on this blog for over a decade).

        2. I think that’s the wrong question here. Why… do we even have a seemingly random disparagement clause in the Lanham Act when it’s mostly about commercial/procedures? Why don’t we apply “disparagement” to copyright or morality on the types of devices that can receive a patent?

          First, allow me to clear away a misconception in your premise. We do examine the morality of inventions as a predicate to their receiving a patent. It is a coarse filter, to be sure, but inventions that are contrary to public policy or sound morals are rejectable as lacking utility.

          Turning back to your real question—why do we scrutinize trademarks but not copyrighted texts for such subjective characteristics as “disparagement” as a prerequisite to registration—the answer is found in the government speech aspect of the matter. The trademark office examines registered marks, and everyone knows that the trademark office examines them. Therefore, when a mark appears on the primary register, it appears to have the government’s imprimatur. It is appearing, as it were, on the government’s “letterhead,” and therefore the taxpayers are fully justified in asking “is this the sort of thing that I wish to pay to have the government promulgate?”. In some cases, the answer to that question is “no.” Those are the cases in which the Congress has exercised its prerogative, as the keeper of the “letterhead,” not to permit registration.

          This is materially different from copyright. No one examines copyrighted texts before they can be registered, and the public knows that no one examines for copyright registration. Nor does the government publish an official register on which all copyrighted texts are published. In other words, a copyrighted text does not appear on the “letterhead,” so to speak, in the same way that a registered mark does. Because copyrighted texts do not appear as government speech in the same way that registered marks do, first amendment concerns would be implicated by a content-based refusal of copyright registration in a way that is not implicated by a content-based refusal of trademark registration.

          1. Your “clearing away a misconception” is itself a misconception.

            What was that case (provided by a helpful poster) the last time you tried your PC intrusion? The orange juice stand case…?

            Your attempted stretch here fails Greg.

          2. And you are also off as far as examination of copyright (from personal knowledge, having dealt with copyright office actions).

            You are simply trying way too hard with way too little here.

            Adding more (of the same) sentences is not helping you, Greg.

          3. Hi Greg,

            Thanks for your comment – I believe that in many eyes, it’s true, people assume what the public knows/doesn’t know. But that’s the problem – we have processes that don’t necessarily reflect actual public understanding of IP law. Going through this case has taught me that the public for the most part (and that includes journalists from “reputable” media sources) don’t know the difference between trademarks and trademark registrations, copyrights, and patents.

            And actually, I do hold many copyrights on government “letterhead” with government seals and all :)

            These were points deeply discussed at the CAFC, especially between the circuit judges and the ACLU and in that situation, none of the 12 federal circuit judges not the DOJ/USPTO attorneys could adequately explain why there were these sharp divisions between copyright and trademark law.

            Of course, the En Banc decision on the case states it clearly:

            “Trademark registration is a regulatory activity.
            These manifestations of government registration do
            not convert the underlying speech to government speech.
            And if they do, then copyright registration would likewise
            amount to government speech. Copyright registration has
            identical accoutrements—the registrant can attach the ©
            symbol to its work, registered copyrights are listed in a
            government database, and the copyright owner receives a
            certificate of registration.”

            Further: “The logical extension of the
            government’s argument is that these indicia of registration
            convert the underlying speech into government
            speech unprotected by the First Amendment. Thus, the
            government would be free, under this logic, to prohibit the
            copyright registration of any work deemed immoral,
            scandalous, or disparaging to others. This sort of censorship
            is not consistent with the First Amendment or government
            speech jurisprudence.”

            1. Trademark registration is a regulatory activity.
              These manifestations of government registration do
              not convert the underlying speech to government speech.
              And if they do, then copyright registration would likewise
              amount to government speech. Copyright registration has
              identical accoutrements…

              Sure, I know that this is what the en banc opinion said. Just like everyone else here, I read the opinion. I just do not think that this assertion—that trademark registration and copyright registration are indistinguishable for present purposes—is correct.

              The government publishes marks—not notices of ownership of marks, but the marks themselves—on the principle register. There is no register where the government publishes copyrighted texts. In other words, the content of the mark itself appears on the government “letterhead.”

              Not so with copyright. When J.D. Salinger registered Catcher In The Rye, he may have received an official looking certificate with the assertion that he owned the copyright to the work, but he did not receive a copy of the work itself on the certificate.

              That is why registered marks invoke the government speech doctrine but registered copyrights do not.

              1. That’s just a disagreement over interpretation of what “government speech” means – but also a disagreement of what a trademark itself is, because even registered trademark holders do not receive a copy of the work itself, when you consider that trademarks are like brands – earned through use.

                But, I’ll leave that to far greater minds to decide. On here, I just wanted to clarify the record – especially when to assumptions about my intentions and my trademark.

                1. Fair enough. Just to be clear, however, I would like to make clear that the certificates that one does or does not receive are irrelevant to the argument that I am making. I rather wish now that I had not used the analogy of “letterhead,” because I get the sense that people are misunderstanding the point I am making, as if the certificate with a government seal were somehow germane to my point. Just to be clear, certificates and seals and the like are entirely beside the point that I am trying to clarify here.

                  My point is that 15 U.S.C. § 1062 provides that “the Director shall… cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration,… the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office… .” In other words, the statute provides that the mark itself will appear in an official organ of the government, with the understanding that it has earned a place in that organ as satisfying criteria that we citizens (acting through our representatives) have established. The culmination of a trademark registration process, therefore, comes with the government “speaking” the mark in the government’s own “mouth.”

                  None of this happens with copyright. The copyright office engages in nothing more than a pro forma examination of the work itself (although there is a fairly searching examination of the application papers), during which the copyright examiners make sure that (1) the work is of the sort protectable by copyright (i.e., not a useful article) and (2) that the work contains the modicum of creativity necessary under Feist. If the work passes these very slight thresholds of examination, the author receives a registration certificate, and that is all. There is no “Copyright Gazette” in which the registered work is then published. That is to say, the government never “speaks” the registered copyrighted work with the government’s own “mouth,” as happens when the registered trademark is published in the Trademark Gazette.

                  That is why trademark registration implicates the government speech doctrine, but copyright registration does not. The Federal Circuit’s en banc observations about circle-C vs. circle-R, or certificates with raised seals are all beside the point, because those are not the locus as which the government is obliged to open its mouth and speak.

                2. That STILL is not government speech, Greg.

                  Notice is someone else’s mark is not speech OF the government.

              2. The government publishes marks—not notices of ownership of marks…

                Er, that should have been:

                The government publishes marks—not just notices of ownership of marks…

                My apologies for any confusion engendered by the omission.

            2. Simon, I think the Federal Circuit is wrong. Putting TM or (R) next to a mark, to the average man, does suggest government endorsement of the disparaging views. The same is not true with copyright, perhaps because copyright is better understood.

              Your best argument has been that the mark in question is not disparaging to the target community.

        3. Simon: “why do we want disparaging marks to be registerable?” I think that’s the wrong question here.

          Be sure to instruct your lawyer to answer that way when the Justices ask that question.

          Why need to instead think, “what does disparaging actually mean?”

          Well, a good place to start with answering that question is an English dictionary.

          Simon: Without the name change that allowed a TM registration, she would not have been signed or receive critical deals which opened up doors for her.

          You have it backwards, Simon. The doors were wide open to Beyonce. All she had to do was change the band name to comply with the law for registration and then walk through the doors. Or she could have decided to make a Federal case out of the requirement. There’s no question that Beyonce has made a lot of compromising choices on her way to becoming a megazillionaire “pop star.” That’s how it usually works, especially for “pop stars” like Beyonce who’s songwriting talents could fit easily inside a thimble.

          once the CAFC issued their Sua Sponte Order to Vacate, they narrowed its scope of whether or not 2(a) violates the First Amendment (which is of course, much different than whether or not the USPTO falsely determined it was disparaging). We didn’t make the free speech argument until the CAFC

          You could have conceded the answer to the First Amendment question and then asked for a determination on the merits. Also, you could have argued that the statute was void for vagueness.

          Or you could have changed the name of your band to The Slanted Chords or The Slanted Doors or The Slanted Look at Life and saved everybody some time. Of course, the modern day artist who wants to “make it big” knows that any attention is the best kind of attention …

          Why don’t we apply “disparagement” to copyright

          Copyright protection exists for very very different reasons and copyrights aren’t examined at all on the basis of the ideas that are expressed. Unlike copyrights, trademarks don’t exist to promote expression or protect the expressive works of authors.

          or morality on the types of devices that can receive a patent?

          We do have such restrictions in the patent system. Note also that valid patents don’t protect expression or information of any kind. Different goals, different restrictions.

          This is key.

          Here’s a question for you: where do you stand on prohibiting the registration of obscene trademarks? I assume that’s unconstitutional as well.

          we choose the name …. to address the false stereotype that all Asians shared slanted eyes.

          With all due respect, that’s just about the most ridiculous thing I’ve ever heard.

          1. We do have such restrictions in the patent system. Note also that valid patents don’t protect expression or information of any kind. Different goals, different restrictions.

            This is key.

            Lulz.

            The irony meter spins out of control (literally and figuratively)

            1. we choose the name [The Slants] to address the false stereotype that all Asians shared slanted eyes.

              Why do I say this is “ridiculous”?

              First, all stereotypes are false to some extent. That’s part of the definition of the term “stereotype” (remember: the dictionary is your friend).

              Second, if you want to educate people about the existence of Asians with eyes that aren’t slanted, how about just doing it? You know, with your mouth and plain English. Like this: “Not all Asians have slanted eyes.” Seems just a tad more straightforward and effective than promoting your “All Asian-American” band with the name “The Slants.”

              Third, given every other bit of info we can find about you on the Internet and your own comments here, the odds that you chose the name for this “public service” reason are close to nil while the odds that you chose the name to draw attention to your “All Asian-American band” for the pure sake of getting additional attention are close to 100%. It’s a marketing gimmick. We get it.

              1. “Third, given every other bit of info we can find about you on the Internet and your own comments here, the odds that you chose the name for this “public service” reason are close to nil while the odds that you chose the name to draw attention to your “All Asian-American band” for the pure sake of getting additional attention are close to 100%. It’s a marketing gimmick. We get it.”

                I take it you haven’t done much searching on us, since everything we have relates to the 10+ years of anti-racism work we’ve done in the Asian American community.

                We’re not the only ones who use “slant” in a positive manner – for example, one of the largest and oldest Asian American film festivals is called SLANT (with the byline of “a bold portrayal of Asian culture”); there’s also SLANT TV and Slants Magazine, as well as a plethora of bloggers as well. Re-appropriation is a very common form of social justice work, a subversive way to tackle institutional and systemic issues.

                “Second, if you want to educate people about the existence of Asians with eyes that aren’t slanted, how about just doing it? You know, with your mouth and plain English. Like this: “Not all Asians have slanted eyes.” Seems just a tad more straightforward and effective than promoting your “All Asian-American” band with the name “The Slants.””

                See above. We actually conduct anti-racism workshops, often on behalf of the U.S Government (including for prisons, soldiers serving overseas, city and state governments, diplomats, etc.). “The Slants” often initiates that conversation and allows us to tackle racism/stereotypes in a different, artistic manner. So yes, we do talk with our mouths. As well as our guitars. And our art. And it actually has led to us being on the committees for city and state government to develop more equitable policies and laws, as well as community investment too. We’ve worked with our community to help boost Asian American voting rates by double digit percentages each year in Oregon as well as raised over $1 million for charities. We work with anti-bullying programs and have helped numerous suicidal youth who were brutally attacked in their schools for being Asian. We work with 143 social justice and community-based organizations across 34 states right now to do this work. The list goes on – and I agree, all of these actions are more effective than just calling our name “The Slants,” but it’s certainly a part of our work. In other words, these actions are not mutually exclusive with our name. We can actually have all of these things.

                It might be hard for others to understand, but as a performing arts organization that is rooted in activism, we’re deeply involved with our community. It isn’t a “marketing gimmick.” And I’m guessing that our community development work is certainly more effective than folks unfamiliar with anti-racism work deciding to criticize us for our name, especially when it comes to marginalized communities.

                1. So yes, we do talk with our mouths. As well as our guitars.

                  And there’s nothing more awesome than a guitar that just screams “Expand trademark protection to include disparaging marks!”

                  Seriously, all the stuff you claim to be doing is great. I applaud your work at trying to educate people and end discrimination against Asian-Americans.

                  How much money have you spent on your Supreme Court case to force the governenment to register disparaging marks? Could that money have been spent in some more productive fashion, do you think? Does it matter to you or your donors that the most incredibly offensive anti-Asian (and other anti-ethnic) slurs you can imagine will become registerable trademarks if you succeed?

                  It isn’t a “marketing gimmick.”

                  I’m not sure what you meant by “it’s” here. But your name is absolutely a marketing gimmick. Everything you are saying here only goes to prove that point.

          2. “You could have conceded the answer to the First Amendment question and then asked for a determination on the merits. Also, you could have argued that the statute was void for vagueness.”

            I’m not an attorney, I don’t know what was in the realm of possibility. But from what I understand, especially given the procedural history, the time for that was passed. Since the three panel CAFC hearing upheld the USPTO/TTAB’s processes and decisions, they only agreed to hear it en banc if we argued in relation to the 1st Amendment.

            1. the three panel CAFC hearing upheld the USPTO/TTAB’s processes and decisions

              So you lost on the merits at the CAFC, and rather than appeal the merits to the Supreme Court, you pursued a different route (the one that wasn’t even the “crux of your argument”) because your lawyers told you that was your best chance at success. Do I have that right?

              “The Slants” isn’t considered disparaging to Asian Americans.

              Well, you had your chance to make that argument at the PTO and in court and you lost the argument. Now you’re making a completely different argument.

              [The dictionary] itself that is inconsistent and changes with time, just like all languages do.

              This is a very silly response to a very appropriate answer to your question. Yes, words can have different meanings and context matters. But we need to start somewhere, don’t we? You didn’t pull “Slants” out of a hat, by your own admission. You understood that the term described the eyes of some Asians ( but not all!) and surely you’re aware of the practice of some groups insulting some Asians (and even Europeans) who have “slanted eyes” by referring to that feature (typically accompanied by other terms that you would presumably also have no problem with the government registering as a trademark).

              Do we need a Beyonce-level pop band with the name, e.g., “The G0 0ks”? You seem to be troubled by the government suggesting that it doesn’t need to participate in the promotion of that reality. Why? Because there’s a shortage of good band names out there that aren’t disparaging?

              1. “So you lost on the merits at the CAFC, and rather than appeal the merits to the Supreme Court, you pursued a different route (the one that wasn’t even the “crux of your argument”) because your lawyers told you that was your best chance at success. Do I have that right?”

                Not exactly. We lost at CAFC’s 3 panel hearing due to precedent (published with “Additional Views” from Judge Moore). One week later, the court vacated that opinion and limited the score of the argument: link to cafc.uscourts.gov

                “Well, you had your chance to make that argument at the PTO and in court and you lost the argument. Now you’re making a completely different argument.”

                It isn’t an argument, it’s a fact. Our legal arguments for SCOTUS haven’t been filed yet. But legal tacts often change from court to court, especially if the court itself calls for only certain types of arguments. And no offense to you or any of the other anonymous commenters who are weighing in on this, but I trust my legal team, especially since they were ones who actually won at the Federal Circuit. I certainly trust them than unknown strangers making comments on a page who may/may not actually have experience with 2(a) cases themselves.

                In regards to the dictionary changing, it isn’t silly. It’s just a fact that people have different interpretations to what “disparaging” means, just like the USPTO has never determined what “substantial composite” means. If we’re to have laws around these things, they should be expressly clear.

                “Do we need a Beyonce-level pop band with the name, e.g., “The G0 0ks”? You seem to be troubled by the government suggesting that it doesn’t need to participate in the promotion of that reality. Why? Because there’s a shortage of good band names out there that aren’t disparaging?”

                I’m sorry, I don’t know what you mean by this. What reality is the government promoting? Again, “disparaging” is a very vague idea…and certainly doesn’t reflect reality that many artists, activists, and organizations engage in reappropriation, irony, sarcasm, and humor to communicate their message. Wit neuters malice. Others, like me, use a non-inherently racialized words (just because a few people use it in a disparaging manner does not make it disparaging…otherwise we’d have more issues with other common words like “apple,” “bumblebee,” or “banana” which are sometimes used racially as well).

                If you have additional questions, feel free to email me. I’m going to be traveling and won’t have time to hop onto this site. In any case, I just wanted to address some misconceptions of this case (and some assumptions about our intentions, our anti-racism work, etc.). Our case is very public and all of the materials for both applications are completely available so you’re more than welcome to go through those as well.

                1. “Again, “disparaging” is a very vague idea…and certainly doesn’t reflect reality that many artists, activists, and organizations engage in reappropriation, irony, sarcasm, and humor to communicate their message. ”

                  Again, you have to understand Sir Tam, MM (like many of the old people deciding your case) has a view on RAYCISMS and “disparagement” that is about 50 years out of date.

          3. “Or you could have changed the name of your band to The Slanted Chords or The Slanted Doors or The Slanted Look at Life and saved everybody some time. Of course, the modern day artist who wants to “make it big” knows that any attention is the best kind of attention …”

            But then again, I shouldn’t have to, especially since “The Slants” isn’t considered disparaging to Asian Americans. That would just be absurd.

            1. What you are seeing here Simon is the liberal left element of this board playing their self-righteous self-appointed politically correct “protectors of children playing in the field of rye” roles.

              Sanctimonious f001s who do not get why we have a First Amendment in the first place.

          4. “Well, a good place to start with answering that question is an English dictionary.”

            A resource itself that is inconsistent and changes with time, just like all languages do. But since Congress didn’t create a definition and instead left it vague, it’s always been subjective

    3. Artists are often wary of names that aren’t able to receive a TM registration… because so many licensing agencies and record companies will refuse to sign with an artist who cannot protect their brand.

      Er, o.k., but this is not really germane to the first amendment question. If your label pressures you to change the band’s name, that is not a government action. It is not a first amendment violation for your record label to say “I want you to choose a different name.”

      92-98% [of Asians/Pacific Islanders]… do not find “The Slants” to be disparaging.

      Fine. If that is true, it certainly is germane, but I am not sure it is dispositive. It seems to me that the next question one needs to ask is “does the general public (i.e., everyone in America, not just those of A/PI heritage) understand the word “slant” as a disparaging term for Asians?” If the answer to that question is “yes,” then the mark is still disparaging, even if the A/PI community is o.k. with it.

      1. “Fine. If that is true, it certainly is germane, but I am not sure it is dispositive. It seems to me that the next question one needs to ask is “does the general public (i.e., everyone in America, not just those of A/PI heritage) understand the word “slant” as a disparaging term for Asians?” If the answer to that question is “yes,” then the mark is still disparaging, even if the A/PI community is o.k. with it.”

        That’s not true, at least not for trademark procedure. Even the USPTO says that a “substantial composite” of the “referenced group;” their two part test actually states…

        “(2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. ” In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006) (citing Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999) (“Harjo I”), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1248 (D.D.C. 2003) (“Harjo II”), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert denied, 130 S. Ct. 631 (2009)).

        On this question of whether a meaning may be disparaging, the general public’s views are irrelevant. Harjo I at 1339 (“the perceptions of the general public are irrelevant…[O]nly the perceptions of those referred to, identified or implicated in some recognizable manner by the involved mark are relevant to this determination.”). In determining whether a mark is disparaging, the PTO strongly prefers that doubts be resolved in favor of the applicant and that the mark be published:

        “Because the guidelines [for determining whether a mark is disparaging] are somewhat vague and because the determination is so highly subjective, we are inclined to resolve doubts on the issue of whether a mark is…disparaging in favor of [the] applicant and pass the mark for publication with the knowledge that if a group does find the mark to be…disparaging, an opposition proceeding can be brought and a more complete record can be established. ” -In re In Over Our Heads Inc., 16 USPQ2d (BNA) 1653, 1654-55 (T.T.A.B. 1990).

        The examining attorney has the burden of proving a prima facie case of disparagement. See e.g., In re Mavety Media Group Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994) (“The PTO has the burden of proving that a trademark falls within a prohibition of [Section 2(a)]”).

        In making the disparagement inquiry, the Examining Attorney should consider the mark “in the context of contemporary attitudes…keeping in mind changes in social mores and sensitivities.” See e.g., In re Boulevard Entertainment, 334 F.3d 1336, 1339 (Fed. Circ. 2003), 67 USPQ2d 1475, 1477 (Emphasis added). Finally, examining attorneys should take care not to substitute their own views for those of the referenced group. See In re Hines, 32 USPQ2d (BNA) 1376, 1377 (T.T.A.B. 1994) (in reversing a refusal to register a mark that allegedly disparaged Buddhists, the TTAB made clear that the PTO should “avoid interposing its own judgment for that of the Buddhists”).

        In this instance, the USPTO failed – on both of our applications, especially in response to the evidence provided.

        1. Your point is well taken. I should have been more clear. When I write about government speech, I am talking about what the law is. When I write about the views of the U.S. population as a whole being relevant to the “disparaging” analysis, I am talking about how (it seems to me) that the law should be.

          I certainly agree with you, however, that the law as it stands does not care about any but the putatively disparaged group.

        2. It seems to me that the CAFC also failed you here, if your goal was simply to have obtained your Slants mark and get on with your totally awesome music career.

  7. You seem to make a few leaps between points that I think require more depth to develop:

    1) Why does the gov’t need to concern itself with how effective a mark is if the mark identifies source and is distinctive?

    2) If the choice of the mark can be denied for its effectiveness, isn’t a mark’s effectiveness a content determination? If so, wouldn’t that hinge on how the USPTO evaluates the content and we are back at square one of determining whether disparagement is a viewpoint evaluation?

    3) Marks may occur both on and off the Federal registry. If a mark is a form of commercial speech and Federal registration confers a benefit to registered marks beyond the benefits received by marks that are not registered, how is the government not “leverage[ing] [a government benefit] to regulate speech outside of the program itself” when it seems to be advantageous to mark holders to register?

  8. You jump too quickly away from business speech having First Amendment protections…

    (that was the first thing that jumped out at me)

    1. “Jumped out” at you? Anon, you forget where you are in cyberspace…

      That said, I agree.

      “Business” activity is the practical manifestation of action in support of life and the pursuit of happiness of individuals in a free society. It is conducted when anyone voluntarily trades with anyone else in any arrangement. Communication associated with it is therefore crucial to the right to life.

      Far from some distasteful outlier in or exception from rights to free speech, and far from being associated with a rare activity undertaken by a population of abstract inactive sedentary children magically taken care of by the State, the right to speech associated with the conduct of business is the right for a free individual to pursue his values, his well being, his very life.

      1. Respectfully, it seems to me that both of you are ignoring his argument. He’s not arguing that commercial speech is not entitled to protection. He’s arguing that the statute doesn’t actually regulate commercial speech at all. It’s possible to completely accept your belief in the exalted position of commercial speech and agree with Mr. Kasnetz’s argument.

        As he points out, denying Tam trademark protection doesn’t affect his right to speech one bit. (Granting him trademark protection, on the other hand, does restrict the speech of others, or, as you put it, the right of any other “free individual to pursue his values, his well being, his very life.” )

        I think Mr. Kasnetz is right that the issue at play is whether a government program that provides incentives for one sort of speech over another is an impermissible regulation of speech. I tend to doubt it, in this context. I think a bigger concern with 2(a) is its vagueness.

        1. “The majority fears that Section 2(a) chills potential selection of disparaging marks, but the real issue isn’t whether trademark choice is being affected, but whether “ideas or viewpoints” will be suppressed. Simon & Schuster v. Members of N.Y. State Crime Victims Bd., 502 U.S. 105, 116 (1991). But trademarks are “commercial speech and nothing more.” Friedman v. Rogers, 447 U.S. at 562. ”

          DanH it seems you believe only “the majority” has this narrow, impoverished view, that the kind of speech deserving of protection only extends to speech which communicates “ideas or viewpoints”, or that only the court in Friedman v. Rogers disparages certain types of speech in the utterance “commercial speech and nothing more”, and that Mr. Kasnetz’ argument in no way depends upon (or presumes or implies) the premise that suppression of “ideas or viewpoints” must be avoided, while suppression of mere “commercial speech and nothing more” is of no concern.

          ………………..

          So what is meant by Kasnetz when he uses the term “speech”, i.e. just what “speech” deserves protection from “chilling”?

          “I am also extremely skeptical that denying registration to disparaging marks actually has a chilling effect on speech.”

          I think the implied equivalence is summed up at the end:

          “Thus, Section 2(a) is “exceedingly unlikely” to suppress or chill expression of any IDEAS and VIEWPOINTS.” [Emphasis Added]

      2. Anon2 “Business” activity is the practical manifestation of action in support of life and the pursuit of happiness of individuals in a free society.

        Oh, boy, we got a live one.

        We live in a Democracy. We have a government run by the people, including people in business. We pass laws, we appoint judges.

        Commercial speech is different from non-commercial speech.

        Communication associated with it is therefore crucial to the right to life.

        Nobody is proposing to ban commercial “communication.” The decision to regulate it, on the other hand, was made a long time ago, for all kinds of excellent reasons.

        the right to speech associated with the conduct of business is the right for a free individual to pursue his values, his well being, his very life.

        Whoa, Nelly, that’s some high fal00tin’ preachin’ there. But the fact is that we the people could decide that businesses could only be identified by numbers sequentially handed out by the government and nobody’s life would be the least bit diminished.

          1. …but here is a thought to muse over:

            Let’s do an experiment on patently O with all comments being stripped of any type of “trademark” identifier and let’s see how the conversation goes.

            1. Let’s do an experiment on patently O with all comments being stripped of any type of “trademark” identifier and let’s see how the conversation goes.

              You’d love it.

              You used to, anyway.

              1. Lol / not surprisingly, your response HERE does not include YOUR feelings on how YOU would be affected.

                (How is that battle of transperancies going with Dr. Noonan?)

        1. But the fact is that we the people could decide that businesses could only be identified by numbers sequentially handed out by the government and nobody’s life would be the least bit diminished.

          Well… Those guys who write jingles for commercials would undoubtedly be affected. “Like a good neighbor, insurance company PX3458-481 is there” just doesn’t have the same ring to it.

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