Slanting trademark choices in the right direction: Why Section 2(a) of the Lanham Act promotes the interests of consumers.

AuthorKasnetz, Zachary

    Trademark law has long regulated the use of words and symbols that identify the sources of goods or services, and since 1905, the federal government has provided for the registration of trademarks used in interstate and foreign commerce. (1) Federal trademark legislation and judicial doctrines comprehensively regulate the scope of trademark rights and the mechanisms for their enforcement. Much of federal trademark law is concerned with what types of marks may or may not be registered. One of the longstanding grounds for denying registration was the subject of the case analyzed by this Note.

    In December 2015, the U.S. Court of Appeals for the Federal Circuit held that a provision of federal trademark law was unconstitutional because it violated the First Amendment, despite the fact that this provision had been on the books and regularly applied for over seventy years. In doing so, it overruled an important precedent that the Federal Circuit had reaffirmed on more than one occasion.

    Part II discusses the case's factual and procedural background. Part III provides background on the relevant aspects of federal trademark law governing registration and the constitutional doctrines relevant to the instant decision. Part IV lays out the court's decision and its reasoning. Finally, Part V critiques the majority's analysis, particularly its application of the doctrine of unconstitutional conditions. It then argues that, under the legal doctrines relied upon by the majority, section 2(a) of the Lanham Act is constitutional.


    Simon Shao Tam is the founder and front man for the Asian-American dance-rock band THE SLANTS. (2) He chose the name because of his Asian heritage, his desire to "reclaim" and "take ownership" of Asian stereotypes, and because the band drew inspiration from childhood slurs and mocking nursery rhymes (about Asian Americans). (3) Tam applied for registration of his mark with the U.S. Patent and Trademark Office ("USPTO"), but the trademark examiner denied registration under section 2(a) of the Lanham Act, finding the mark likely referred or would be perceived as referring to people of Asian descent in a disparaging way, explaining that the term "slants" had historically been used to "deride and mock" a physical feature (the eyes) of people of Asian descent. (4)

    Tam appealed to the Trademark Trial and Appeal Board ("TTAB"), (5) arguing that his mark was not disparaging. (6) The TTAB affirmed the examiner's decision, finding that the mark likely referred to persons of Asian descent and that a "substantial composite" of such persons would find the mark disparaging. (7) The TTAB also stated that its decision merely denied placement on the register and did not restrict Tam's right to use the mark. (8)

    Tam appealed the TTAB's denial to the U.S. Court of Appeals for the Federal Circuit, arguing that: (1) THE SLANTS was not disparaging of Asian-Americans, (2) section 2(a) was an unconstitutional abridgment of Tam's free speech rights under the First Amendment, and (3) section 2(a) was unconstitutionally vague. (9) The Federal Circuit affirmed the TTAB's decision, concluding that substantial evidence supported the finding that THE SLANTS was disparaging or would be perceived as disparaging by a substantial composite of persons of Asian descent. (10) Turning to Tam's constitutional challenge, the panel held that binding precedent foreclosed his First Amendment claim and rejected his vagueness claim. (11)

    In a separate concurring opinion, Judge Moore called on the Federal Circuit to rehear the case en banc to revisit its existing precedent holding that refusing to register a trademark does not violate the First Amendment. (12) She then spent ten pages--in a preview of her opinion for the majority in the instant case--arguing that section 2(a) was unconstitutional. (13) One week after the panel's opinion was issued, the Federal Circuit voted sua sponte to vacate the panel opinion, setting the case for reargument before the en banc court to decide if "the bar on registration of disparaging trademarks in [section 2(a)] violate[s] the First Amendment." (14)

    The government argued that section 2(a) did not implicate the First Amendment because it did not prevent Tam from using his mark but simply defined eligibility for a government program. (15) Tam argued that section 2(a) was a restriction on speech, that it abridged his free speech rights by conditioning the benefits of federal registration on the government approving of a mark, and therefore section 2(a) was facially unconstitutional. (16) The en banc Federal Circuit agreed with Tam, holding that (1) section 2(a) did restrict speech and was a content-based and viewpoint-based restriction, (2) registering a trademark was not government speech or a government subsidy, and (3) because section 2(a) could not pass strict or intermediate scrutiny, it was facially unconstitutional under the First Amendment. (17)


    This section lays out the basic legal doctrines relevant to the majority's decision. Part A provides a general overview of federal trademark law and the benefits of federal registration, followed by an explanation of section 2(a)'s prohibition on the registration of disparaging marks. Part B discusses the relevant First Amendment doctrines that distinguish between different categories of speech and speech regulations. Finally, Part C summarizes the doctrine of unconstitutional conditions, which limits the government's ability to require citizens to surrender or waive various rights in order to receive government benefits.

    1. Federal Trademark Law: The Lanham Act

      1. Framework

        The Lanham Act, (18) enacted in 1946, governs federal registration and protection of trademarks used in interstate commerce. The Act's primary goals are to (1) prevent consumer confusion and deception and (2) ensure that mark holders can protect their marks from misappropriation. (19) It covers both trademarks, which are any "word, name, [or] symbol... used by a person... to identify and distinguish... a unique product," and service marks, which are used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others. (20) A registrable mark must be used in commerce and be sufficiently distinctive, either inherently or through the acquisition a of secondary meaning, that it clearly indicates the origin of a good or service. (21)

        Federal registration does not create a trademark or confer ownership, but it does give the mark holder substantial legal rights and benefits. (22) However, even if one cannot or chooses not to register his or her mark, section 43 of the Lanham act provides a cause of action for infringement of unregistered marks, false advertising, and dilution. (23) Finally, every state has its own system of trademark registration and protection that operates parallel to federal registration. (24)

        To register a mark, the holder must apply with the USPTO. (25) The application is examined ex parte by an examiner to determine whether the proposed mark satisfies the legal requirements for placement on the federal registry. (26) If the examiner determines that the mark does not satisfy the requirements, an applicant can appeal the decision to the TTAB. (27) Finally, if the refusal is affirmed, an applicant can appeal to the Federal Circuit or seek de novo review in a U.S. district court. (28)

      2. Section 2(a)'s Prohibition on Registering Disparaging Trademarks

        Section 2(a) of the Lanham Act bars registration of any mark that "may disparage... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." (29) A mark is disparaging if it "dishonors by comparison [to the person or group] with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison." (30) The USPTO uses a two-part test to determine if a mark is potentially disparaging. (31) Specifically, it asks:

        (1) [W]hat is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) [I]f 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. (32) Therefore, disparagement turns on how the mark is perceived, not by the mark holder's intended message. (33) Section 2(a) also requires cancellation of a registered mark if it is later challenged by a third party and is found to be disparaging. (34)

        Given the lack of precision contained in the text of section 2(a) and the accompanying Examiner's Manual, it is unsurprising that this test has been applied in an unpredictable and seemingly arbitrary manner. (35) Indeed, courts acknowledge that these guidelines are "somewhat vague" and that the "determination of whether a mark is scandalous or disparaging is necessarily a highly subjective one." (36)

        The only major constitutional challenge to section 2(a) was in In re McGinley. (37) In McGinley, the applicant challenged section 2(a) as an unconstitutional content-based restriction on speech and argued that it was void for vagueness. (38) The Court of Customs and Patent Appeals quickly disposed of the First Amendment claim in three sentences, stating that:

        [T]he PTO's refusal to register appellant's mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant's First Amendment rights would not be abridged by the refusal to register his mark. (39) The court's essential conclusion was that section 2(a) is constitutional because it does not stop anyone from saying anything...

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