The IP Library has acquired four prints of SLANT art, created by members of a musical group composed of persons of Asian descent that had been party to a trademark disparagement suit. Tam applied to register the mark "The Slants," but the examining attorney refused on the basis of disparagement and the Board affirmed. The Federal Circuit, in an en banc decision, reversed. The Supreme Court affirmed the decision of the Federal Circuit.
Tam is the lead singer of "The Slants," a musical group composed of persons of Asian descent. Tam chose the name in order to take ownership of stereotypes about people of Asian ethnicity. Tam sought federal registration of "The Slants," but the examining attorney refused on the basis that the applied-for mark was disparaging and the Board affirmed. The Federal Circuit, hearing the case en banc, reversed, finding that the disparagement clause violated the 1st Amendment.
The Supreme Court rejected Tam's argument that the disparagement clause did not reach marks that disparaged racial or ethnic groups, but only marks that disparaged "persons." A mark that disparaged a substantial percentage of the members of a racial or ethnic group necessarily disparaged many persons. Further, by its terms, the clause applied to marks that disparaged institutions and beliefs, not just persons. The clause was not limited to marks that disparaged a particular natural person. The Supreme Court also rejected the government's argument that trademarks were government speech. The government did not dream up trademarks and did not edit marks submitted for registration. Moreover, once a mark was registered, the PTO was not authorized to remove it from the register unless a party moved for cancellation, the registration expired, or the FTC initiated proceedings based on certain grounds. The PTO had also made it clear that registration did not constitute approval of a mark. Thus, trademarks were private speech. In addition, the court rejected the notion that trademarks were a form of government subsidy. Federal registration of a mark was nothing like traditional subsidy programs. Finally, the disparagement clause could not be saved by analyzing it as a type of government program in which content- and speaker-based restrictions were permitted. Matal v. Tam (6/19/17) as reported by Juris Notes.