Lee v. Tam: Supreme Court Considers Constitutionality of USPTO Disparagement Bar

Rebeccah Gan
September 30, 2016

In Michelle K. Lee, Director, United States Patent and Trademark Office, Petitioner v. Simon Shiao Tam, No. 15-1293, The Supreme Court has granted a petition for writ of certiorari lodged by the USPTO appealing the Federal Circuit Court of Appeals’ decision in In re Tam (No. 14-1203, Fed. Cir. Dec. 22, 2015).

In a 9-3 en banc decision, the Federal Circuit Court of Appeals ruled that Section 2(a) of the Lanham Act, which, e.g., bars registration of marks that “disparage” a group of persons, unconstitutionally infringes free speech. Section 2(a) also bars registration of “scandalous” and “immoral” trademarks. Although the Court did not expressly consider whether other Section 2(a) provisions were unconstitutional, it left the door open for future court challenges as to purported “scandalous” or “immoral” marks. The Tam case was itself an appeal of the USPTO’s refusal to register the mark THE SLANTS, which was used as the name for an “Asian-American dance-rock band” because the term is an ethnic slur for Asians. The Fourth Circuit Court of Appeals is presently hearing an appeal of a Virginia Eastern District Court decision affirming the USPTO’s decision to cancel several REDSKINS registrations because they were found disparaging of Native Americans. The USPTO petitioned for writ of certiorari to address whether the disparagement provision is facially invalid under the Free Speech Clause of the First Amendment. Interestingly, Tam agreed that certiorari should be granted and additionally asked the Court to consider whether the disparagement provision is unconstitutionally vague under the First and Fifth Amendments, and if the Court were to find that the disparagement provision passed constitutional scrutiny, whether the applied-for mark was actually disparaging under the Section 2(a) test. In an unusual move, the owners of the Redskins filed a prejudgment petition for writ of certiorari, asking the Supreme Court to consider its appeal before the Fourth Circuit Court of Appeals had actually ruled on the REDSKINS appeal from the Eastern District of Virginia. As of the date of this article, the Supreme Court has not ruled on the REDSKINS writ.