In the

Supreme Court of the United States

MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, PETITIONER

v.

SIMON SHIAO TAM , Respondent.

 

QUESTION PRESENTED

Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registra­tion on account of its nature unless it "consists of matter which may disparage persons, living or dead, institutions, beliefs, or nation­al symbols, or bring them into contempt, or disre­pute." The question presented is as follows:

Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.

 

BRIEF FOR THE PETITIONER

STATEMENT

1. A trademark is a "word, name, symbol, or de­vice" used by a person "to identify and distinguish his or her goods" in commerce and "to indicate the source of the goods." "Trademarks desira­bly promote competition and the maintenance of product quality." Trademark law also protects the public by preventing competing mer­chants from using similar marks to confuse or mislead consumers.

Trademark rights are not created by federal law, but rather arise through use of a mark in commerce in connection with particular goods and services. Those common-law rights include the right to prevent others from using the mark and the right to sue for infringe­ment.

Certain federal remedies for infringement, dilution, and unfair competition are available to owners of all marks used in interstate or foreign commerce, regard­less of whether a mark is registered. Congress has also created a system of federal registration that confers additional benefits upon the owners of registered marks. For example, registration provides prima facie evidence of the owner's exclusive right to use the mark in commerce in connection with the goods or services listed in the registration. Registration also provides con­structive notice of the registrant's claim of ownership of the mark. After five years of regis­tration, an owner's right to use a trademark can be­come "incontestable," so that it may be challenged only on limited grounds. In order to facilitate the mark owner's ability to invoke these protections, the government issues to the owner a cer­tificate of registration "in the name of the United States of America"; publishes the mark in the PTO's Trademark Official Gazette; and records the mark in the PTO's Principal Re­gister or Supplemental Register.

To obtain federal registration, a mark owner sub­mits an application to the United States Patent and Trademark Office (PTO). Only marks meeting the criteria set out by Congress can be registered. As relevant here, Congress has direct­ed the PTO to "refuse registration" of marks consist­ing of or comprising "matter which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute," even if they are capable of distinguishing the owner's goods or services.

2. Respondent is the lead singer of a dance-rock band called "The Slants." In 2011, he sought to federally register the mark THE SLANTS in connection with live performances by his band. Respondent had been using that mark in commerce to identify the band since 2006.

A PTO examining attorney refused to register the mark on the ground that it is disparaging to persons of Asian ancestry. The examining attorney relied on evi­dence that "slant" is a "negative term regarding the shape of the eyes of certain persons of Asian descent," which has a "long history of being used to deride and mock a physical feature of those individuals." The examining attorney noted that the refusal of reg­istration "does not mean that the band must use a different name with its music performances" or "is otherwise prohibited from using the wording 'The Slants' in association with its music."  

The PTO's Trademark Trial and Appeal Board (Board) affirmed. The Board concluded that respondent's mark is used to refer to an identifiable group of people-persons of Asian ancestry-and that the mark is disparaging to a sub­stantial composite of that group. The Board explained that dictionary defi­nitions and other record evidence "unanimously cate­gorized the word 'slant,' when meaning a person of Asian descent, as disparaging," and that the band itself has characterized its name as "derived from an ethnic slur for Asians". Respondent had argued that he sought to "take on stereotypes" about Asians rather than to disparage persons of Asian ancestry, but the Board determined that a mark's status as "disparag­ing" does not depend on the applicant's purpose in using the mark. The Board further con­cluded that the PTO's refusal to register respondent's mark does not violate the First Amendment because the denial of registration does not suppress speech or proscribe conduct, but simply prevents respondent from calling upon the resources of the federal gov­ernment to assist him in enforcing the mark.

3. A panel of the court of appeals affirmed. The court first rejected respondent's argument that the Board had erred in finding his mark disparaging under Section 1052(a). The court concluded that substantial evidence supports the Board's findings that "the mark THE SLANTS refers to people of Asian descent" and that the mark "is likely offensive to a substantial composite of people of Asian descent." The court noted that "the definitions in evidence universally character­ize the word 'slant' as disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent."

The court of appeals panel rejected respondent's various constitutional challenges, including his First Amendment challenge to Section 1052(a)'s dis­paragement provision. Relying on circuit precedent, the court explained that "the PTO's refusal to register the mark does not affect respondent's right to use it"; that "no conduct is proscribed, and no tangible form of expression is suppressed"; and that respond­ent's First Amendment rights therefore are not "abridged by the refusal to register his mark." The court also reject­ed respondent's vagueness, due process, and equal protection challenges.

4. The en banc court of appeals vacated the Board's decision and remanded. The court first reviewed the record evidence and upheld the panel's determination that respondent's mark is "dis­paraging" within the meaning of 15 U.S.C. 1052(a). The court further held, how­ever, that Section 1052(a)'s ban on the registration of disparaging trademarks is facially unconstitutional.

The en banc court of appeals rejected the govern­ment's argument that Congress may, consistent with the First Amendment, create an optional program of federal trademark registration without opening that program to racial slurs and other disparaging marks. Instead, the court viewed Section 1052(a)'s ban on registration of disparaging trade­marks as a law that "penalizes private speech merely because the government disapproves of the message it conveys." Because the court interpreted Section 1052(a)'s disparagement provision as a view­point-based restriction on speech, it subjected the provision to strict scrutiny and found it facially invalid under the First Amendment. The court also stated that it would find the provision un­constitutional even under the more forgiving First Amendment standard governing restrictions on com­mercial speech because there is no "substantial gov­ernment interest justifying" Congress's decision to forbid federal registration of disparaging marks

Judge O'Malley filed a concurring opinion, agreeing with the majority's First Amendment analysis and stating the view that Section 1052(a)'s disparagement provi­sion also is unconstitutionally vague (an issue the majority did not reach). Judge Dyk concurred in part and dissented in part. He would have held that the ban on registration of disparaging marks is facially constitutional because registration is a government benefit for commercial speech that reasonably may be denied to disparaging marks. He would have further held, however, that the statute is unconstitutional as applied here because respondent's mark involves "political" speech.

Judge Lourie dissented, concluding that the dis­paragement provision is constitutional because it does not prohibit any speech but instead permissibly de­fines the boundaries of a federal program. Judge Reyna also dissented, expressing the view that Section 1052(a)'s dis­paragement provision is a permissible regulation of commercial speech because it "directly advances the government's substantial interest in the orderly flow of commerce." 

SUMMARY OF ARGUMENT

The prohibition on registration of disparaging marks in 15 U.S.C. 1052(a) is facially constitutional under the First Amendment. Section 1052(a) defines the marks eligible for federal registration and publication and for the federal benefits associated with that govern­ment program. It does not in any way restrict respon­dent's freedom of speech. Nothing in the First Amend­ment requires Congress to encourage the use of racial slurs in interstate commerce.

A. This Court has recognized a fundamental dis­tinction between laws that regulate speech and laws that selectively fund a government program. "When the Government appropriates public funds to establish a program it is entitled to define the limits of that program."

Applying that principle, the Court has upheld the denial of federal tax-exempt status for non-profit organizations' lobbying activities, and has sustained federal regulations that prohibited use of family-planning funds for abortion ­related services. In so holding, the Court has "rejected the notion that First Amend­ment rights are somehow not fully realized unless they are subsidized by the State." The Court has also applied the "general rule that the Government may choose not to subsidize speech" in uphold­ing conditions on other forms of government assis­tance, such as the provision of a payroll-deduction mechanism for use by a union in collecting agency­shop fees. And the Court has upheld the State of Texas's decision not to provide a "mobile billboard" for offensive messages on state specialty license plates.

The common thread running through these deci­sions is that the government has significant discretion to decide which activities to fund and what criteria to use for inclusion in government programs. Because the government is not restricting speech, but merely declining to provide government assistance, the strict scrutiny normally applicable to content- and view­point-based distinctions is inappropriate.

B. Section 1052(a) establishes criteria for participa­tion in the government's trademark-registration pro­gram; it does not restrict speech.

Trademark rights arise though use of the mark in commerce, not by operation of federal law, and a mark holder may enforce its mark without registering it. But voluntary federal registration provides important benefits. Among other things, registration provides notice of the registrant's claim of ownership of the mark and prima facie evidence of validity. The registrant is issued a cer­tificate "in the name of the United States of America" and under the seal of the PTO, and the registered mark is published in the PTO's Trademark Official Gazette and on its official register.

A mark is not eligible for federal registration if it contains "matter which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." Refusal of registration does not affect respondent's ability to use THE SLANTS as a trademark or to engage in any other speech, but simply renders unavailable the various benefits and protections that federal registration pro­vides. Those benefits are directly traceable to the resources devoted by the federal government to exam­ining, publishing, and issuing certificates of registra­tion for those marks. Under the court of appeals' decision, the federal government would be required to register, publish, and transmit to foreign countries marks containing crude references to women based on parts of their anatomy; the most repellent racial slurs and white-supremacist slogans; and demeaning illus­trations of the prophet Mohammed and other religious figures. In addition to the government's interest in declining to create incentives for the use of such marks in commerce, the government has a substantial interest in avoiding the incorporation of objectionable marks into official government communications, and the consequent association of the marks with the gov­ernment itself.

The court of appeals believed that denial of the benefits that trademark registration provides imposed a First Amendment burden on respondent. But this Court has rejected that view, explaining that the "de­cision not to subsidize the exercise of a fundamental right does not infringe that right." The court of appeals erred in characterizing Sec­tion 1052(a)'s disparagement provision as imposing an "unconstitutional condition." That provision does not trigger "unconstitutional conditions" analysis because it does not go beyond "defining the limits of the government spending program" and "seek to leverage funding to regulate speech outside the contours of the program itself." To the extent that Section 1052(a)'s eligibility criteria encourage people to adopt non-disparaging terms as trademarks, that encouragement is permissible be­cause mark holders remain "free to engage in such speech as they see fit"

C. Section 1052(a)'s disparagement provision is fa­cially constitutional. Like the government programs this Court has previously upheld, that provision de­fines eligibility for the government benefits associated with registration; premises registration only on the content of the mark itself and does not restrict the applicant's expression outside of the program; and re­flects a policy choice to encourage activities that are in the public interest. To the extent that the effect of registration is to incorporate registered marks into official government documents, Section 1052(a)'s dis­paragement provision is particularly analogous to the ban on offensive specialty-license-plate designs upheld in Walker. Just as any motorist who wished to display a Confederate battle flag on his vehicle could do so on a bumper sticker without the State's assistance, re­spondent can use the term "slants" in any way he wants even if his trademark cannot be registered. And just as the State of Texas could permissibly dis­associate itself from a symbol it viewed as offensive to the public, the federal government can permissibly disassociate itself from disparaging trademarks.

The court of appeals concluded that Section 1052(a) is not a condition on a government program, but the court's reasoning is unpersuasive. Section 1052(a) establishes criteria for government assistance in en­forcing marks that identify goods and services in commerce; it does not restrict speech. The court of appeals also erred in failing to see the applicability of the government-speech doctrine. That doctrine is im­plicated here because owners of registered marks are issued certificates in the name of the United States, and the government publishes the marks and trans­mits registration information to foreign countries. And the court of appeals was wrong to view Section 1052(a)'s disparagement provision as an impermissible viewpoint-based restriction on speech. The provision does not premise registration on the viewpoint of the mark holder and does not raise any realistic threat of driving certain viewpoints from the marketplace of ideas.

Section 1052(a) serves Congress's legitimate inter­ests. Having created a federal trademark-registration program, Congress may legitimately decide that it is not in the public interest to encourage use of disparag­ing terms to identify goods and services in commerce. And because the effect of registration is to cause reg­istered marks to be incorporated into various formal government communications, the government has an additional interest in disassociating itself from racial slurs and other offensive speech. The Constitution does not put Congress to the choice of either eliminat­ing the federal trademark-registration program alto­gether or promoting the use of racial slurs in inter­state commerce.

While Congress cannot prohibit the use of dispar­aging terms to express ideas, the government has no obligation to support such speech. The Constitution does not put Congress to the choice of either eliminat­ing the federal trademark-registration program alto­gether or promoting the use of racial slurs in inter­state commerce.

CONCLUSION

The judgment of the court of appeals should be reversed.