Background
Simon Shiao Tam is the lead singer of The Slants, an Asian-American rock band from Portland, Oregon. In 2011, Tam applied to register THE SLANTS as a service mark for entertainment services. The Patent and Trademark Office refused registration under Section 2(a) of the Lanham Act, which prohibits registration of marks that “consist of or comprise immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” The PTO’s examining attorney concluded that “slants” is disparaging to people of Asian descent.
Tam argued that the disparagement bar was unconstitutional under the First Amendment — and that he had deliberately chosen the name to reclaim the slur and celebrate Asian-American identity. The Trademark Trial and Appeal Board (TTAB) affirmed the refusal, and a Federal Circuit panel initially affirmed as well in 2015. But the Federal Circuit ordered a rehearing en banc sua sponte, inviting the full court to reconsider the constitutionality of the disparagement provision. The case had broad implications beyond The Slants: the Washington Redskins had also had their trademarks cancelled under the same provision.
The Court’s Holding
The en banc Federal Circuit, in a decision authored by Judge Moore, held that the Lanham Act’s disparagement bar violates the Free Speech Clause of the First Amendment. The court applied the framework for government regulations of speech and concluded that trademark registration is a government benefit conditioned on viewpoint — the government allows registration of some marks but not others based on whether the government considers the mark’s message disparaging. This is quintessential viewpoint discrimination, which is presumptively unconstitutional.
The government argued that trademarks are government speech (not subject to First Amendment constraints) or that the program fell within the commercial speech doctrine (subject to more lenient scrutiny). The Federal Circuit rejected both arguments. Trademarks are private speech — the government does not craft or adopt trademark messages as its own. And even applying the more permissive commercial speech analysis, the disparagement bar failed because it was not narrowly tailored: it did not suppress speech to serve a legitimate commercial regulatory interest but instead censored viewpoints the government found offensive. The PTO denied Tam’s application because of the message the mark communicated — a classic First Amendment violation.
Key Takeaways
- The Lanham Act’s ban on registration of “disparaging” trademarks violates the First Amendment as unconstitutional viewpoint discrimination — the government cannot condition a government benefit (trademark registration) on a speaker’s agreement to refrain from expressing disfavored viewpoints.
- Trademark registration programs involve private speech, not government speech — the government does not adopt trademark messages as its own by registering them.
- The Supreme Court unanimously affirmed in Matal v. Tam (2017), ending the use of the disparagement provision to refuse or cancel trademark registrations based on perceived offensiveness.
- The Tam ruling also eventually led to the Federal Circuit’s In re Brunetti (2019) decision striking down the Lanham Act’s ban on “immoral or scandalous” marks — later affirmed by the Supreme Court in Iancu v. Brunetti (2019).
Why It Matters
In re Tam produced one of the most significant trademark law rulings in decades, fundamentally reordering the relationship between trademark registration and the First Amendment. The Lanham Act’s disparagement provision had stood for seven decades, used to refuse registration for marks the PTO deemed offensive to racial, ethnic, religious, or other groups. The Federal Circuit’s ruling swept that provision aside, holding that trademark law — like other areas of government benefit programs — cannot discriminate based on the viewpoint expressed.
The practical effects were immediate and lasting. The Washington Redskins, whose trademarks had been cancelled under the disparagement provision, regained their registrations. The USPTO could no longer refuse registration of marks it considered racially or ethnically offensive. For trademark practitioners, the case established that the government cannot use the registration process as a tool for suppressing speech it dislikes — registration is available for all marks that meet the other formal requirements of trademark law, regardless of whether their messages are popular or offensive. Subsequent First Amendment challenges to other Lanham Act content restrictions (the immoral/scandalous bar) followed in the Tam decision’s wake.