JOSEPH MATAL, INTERIM DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, PETITIONER
SIMON SHIAO TAM
January 18, 2017
OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE
Simon Tarn, lead singer of the rock group "The Slants,
" chose this moniker in order to "reclaim" the
term and drain its denigrating force as a derogatory term for
Asian persons. Tam sought federal registration of the mark
"THE SLANTS." The Patent and Trademark Office (PTO)
denied the application under a Lanham Act provision
prohibiting the registration of trademarks that may
"disparage ... or bring . . . into contemp[t] or
disrepute" any "persons, living or dead." 15
U.S.C. §1052(a). Tam contested the denial of
registration through the administrative appeals process, to
no avail. He then took the case to federal court, where the
en banc Federal Circuit ultimately found the disparagement
clause facially unconstitutional under the First
Amendment's Free Speech Clause.
The judgment is affirmed.
F.3d 1321, affirmed.
JUSTICE Alito delivered the opinion of the Court with respect
to Parts I, II, and III-A, concluding:
1. The disparagement clause applies to marks that disparage
the members of a racial or ethnic group. Tarn's view,
that the clause applies only to natural or juristic persons,
is refuted by the plain terms of the clause, which uses the
word "persons." A mark that disparages a
"substantial" percentage of the members of a racial
or ethnic group necessarily disparages many "persons,
" namely, members of that group. Tarn's narrow
reading also clashes with the breadth of the disparagement
clause, which by its terms applies not just to "persons,
" but also to "institutions" and
"beliefs." §1052(a). Had Congress wanted to
confine the reach of the clause, it could have used the
phrase "particular living individual, " which it
used in neighboring §1052(c). Tarn contends that his
interpretation is supported by legislative history and by the
PTO's practice for many years of registering marks that
plainly denigrated certain groups. But an inquiry into the
meaning of the statute's text ceases when, as here,
"the statutory language is unambiguous and the statutory
scheme is coherent and consistent." Barnhart v.
Sigmon Coal Co., 534 U.S. 438, 450 (internal quotation
marks omitted). Even if resort to legislative history and
early enforcement practice were appropriate, Tam has
presented nothing showing a congressional intent to adopt his
interpretation, and the PTO's practice in the years
following the disparagement clause's enactment is
unenlightening. Pp. 8-12.
2. The disparagement clause violates the First
Amendment's Free Speech Clause. Contrary to the
Government's contention, trademarks are private, not
government speech. Because the "Free Speech Clause . . .
does not regulate government speech, " Pleasant
Grove City v. Summum, 555 U.S. 460, 467, the government
is not required to maintain viewpoint neutrality on its own
speech. This Court exercises great caution in extending its
government-speech precedents, for if private speech could be
passed off as government speech by simply affixing a
government seal of approval, government could silence or
muffle the expression of disfavored viewpoints.
The Federal Government does not dream up the trademarks
registered by the PTO. Except as required by §1052(a),
an examiner may not reject a mark based on the viewpoint that
it appears to express. If the mark meets the Lanham Act's
viewpoint-neutral requirements, registration is mandatory.
And once a mark is registered, the PTO is not authorized to
remove it from the register unless a party moves for
cancellation, the registration expires, or the Federal Trade
Commission initiates proceedings based on certain grounds. It
is thus farfetched to suggest that the content of a
registered mark is government speech, especially given the
fact that if trademarks become government speech when they
are registered, the Federal Government is babbling
prodigiously and incoherently. And none of this Court's
government-speech cases supports the idea that registered
trademarks are government speech. Johanns v. Livestock
Marketing Assn., 544 U.S. 550; Pleasant Grove City
v. Summum, 555 U.S. 460; and Walker v. Texas Div.,
Sons of Confederate Veterans, Inc., 576 U.S.,
distinguished. Holding that the registration of a trademark
converts the mark into government speech would constitute a
huge and dangerous extension of the government-speech
doctrine, for other systems of government registration (such
as copyright) could easily be characterized in the same way.
Justice Alito, joined by The Chief Justice, Justice Thomas,
and JUSTICE BREYER, concluded in Parts III-B, III-C, and IV:
(a) The Government's argument that this case is governed
by the Court's subsidized-speech cases is unpersuasive.
Those cases all involved cash subsidies or their equivalent,
e.g., funds to private parties for family planning
services in Rust v. Sullivan, 500 U.S. 173, and cash
grants to artists in National Endowment for Arts v.
Finley, 524 U.S. 569. The federal registration of a
trademark is nothing like these programs. The PTO does not
pay money to parties seeking registration of a mark; it
requires the payment of fees to file an application and to
maintain the registration once it is granted. The Government
responds that registration provides valuable non-monetary
benefits traceable to the Government's resources devoted
to registering the marks, but nearly every government service
requires the expenditure of government funds. This is true of
services that benefit everyone, like police and fire
protection, as well as services that are utilized by only
some, e.g., the adjudication of private lawsuits and
the use of public parks and highways. Pp. 18-20.
(b) Also unpersuasive is the Government's claim that the
disparagement clause is constitutional under a
"government-program" doctrine, an argument which is
based on a merger of this Court's government-speech cases
and subsidy cases. It points to two cases involving a public
employer's collection of union dues from its employees,
Davenport v. Washington Ed. Assn., 551 U.S. 177, and
Ys-ursa v. Pocatello Ed. Assn., 555 U.S. 353, but
these cases occupy a special area of First Amendment case law
that is far removed from the registration of trademarks.
Cases in which government creates a limited public forum for
private speech, thus allowing for some content- and
speaker-based restrictions, see, e.g., Good News Club v.
Milford Central School, 533 U.S. 98, 106-107;
Rosenberger v. Rector and Visitors of Univ. of Va.,
515 U.S. 819, 831, are potentially more analogous. But even
in those cases, viewpoint discrimination is forbidden. The
disparagement clause denies registration to any mark that is
offensive to a substantial percentage of the members of any
group. That is viewpoint discrimination in the sense relevant
here: Giving offense is a viewpoint. The "public
expression of ideas may not be prohibited merely because the
ideas are themselves offensive to some of their
hearers." Street v. New York, 394 U.S. 576,
592. Pp. 20-23.
(c) The dispute between the parties over whether trademarks
are commercial speech subject to the relaxed scrutiny
outlined in Central Hudson Gas & Elect, v. Public
Serv. Comm'n of N. Y., 447 U.S. 557, need not be
resolved here because the disparagement clause cannot
withstand even Central Hudson review. Under
Central Hudson, a restriction of speech must serve
"a substantial interest" and be "narrowly
drawn." Id., at 564-565 (internal quotation
marks omitted). One purported interest is in preventing
speech expressing ideas that offend, but that idea strikes at
the heart of the First Amendment. The second interest
asserted is protecting the orderly flow of commerce from
disruption caused by trademarks that support invidious
discrimination; but the clause, which reaches any trademark
that disparages any person, group, or institution,
is not narrowly drawn. Pp. 23-26.
Justice Kennedy, joined by Justice Ginsburg, Justice
So-TOMAYOR, and JUSTICE Kagan, agreed that 15 U.S.C.
§1052(a) constitutes viewpoint discrimination,
(a) With few narrow exceptions, a fundamental principle of
the First Amendment is that the government may not punish or
suppress speech based on disapproval of the ideas or
perspectives the speech conveys. See Rosenberger v.
Rector and Visitors of Univ. of Va., 515 U.S. 819,
828-829. The test for viewpoint discrimination is
whether-within the relevant subject category-the government
has singled out a subset of messages for disfavor based on
the views expressed. Here, the disparagement clause
identifies the relevant subject as "persons, living or
dead, institutions, beliefs, or national symbols, "
§1052(a); and within that category, an applicant may
register a positive or benign mark but not a derogatory one.
The law thus reflects the Government's disapproval of a
subset of messages it finds offensive, the essence of
viewpoint discrimination. The Government's arguments in
defense of the statute are unpersuasive. Pp. 2-5.
(b) Regardless of whether trademarks are commercial speech,
the viewpoint based discrimination here necessarily invokes
heightened scrutiny. See Sorrell v. IMS Health Inc.,
564 U.S. 552, 566. To the extent trademarks qualify as
commercial speech, they are an example of why that category
does not serve as a blanket exemption from the First
Amendment's requirement of viewpoint neutrality. In the
realm of trademarks, the metaphorical marketplace of ideas
becomes a tangible, powerful reality. To permit viewpoint
discrimination in this context is to permit Government
censorship. Pp. 5-7.
J., announced the judgment of the Court and delivered the
opinion of the Court with respect to Parts I, II, and III-A,
in which Roberts, C. J., and Kennedy, Ginsburg, Breyer,
Sotomayor, and KAGAN, JJ., joined, and in which THOMAS, J.,
joined except for Part II, and an opinion with respect to
Parts III-B, III-C, and IV, in which Roberts, C. J., and
Thomas and Breyer, JJ., joined. Kennedy, J., filed an opinion
concurring in part and concurring in the judgment, in which
Ginsburg, Sotomayor, and Kagan, JJ., joined. Thomas, J.,
filed an opinion concurring in part and concurring in the
judgment. GORSUCH, J., took no part in the consideration or
decision of the case.
ALITO announced the judgment of the Court and delivered the
opinion of the Court with respect to Parts I, II, and III-A,
and an opinion with respect to Parts III-B, III-C, and IV, in
which THE CHIEF JUSTICE, Justice Thomas, and Justice Breyer
case concerns a dance-rock band's application for federal
trademark registration of the band's name, "The
Slants." "Slants" is a derogatory term for
persons of Asian descent, and members of the band are
Asian-Americans. But the band members believe that by taking
that slur as the name of their group, they will help to
"reclaim" the term and drain its denigrating force.
Patent and Trademark Office (PTO) denied the application
based on a provision of federal law prohibiting the
registration of trademarks that may "disparage ... or
bring . . . into contemp[t] or disrepute" any
"persons, living or dead." 15 U.S.C. §1052(a).
We now hold that this provision violates the Free Speech
Clause of the First Amendment. It offends a bedrock First
Amendment principle: Speech may not be banned on the ground
of the Court expresses ideas that offend.
principle underlying trademark protection is that distinctive
marks-words, names, symbols, and the like- can help
distinguish a particular artisan's goods from those of
others." B&B Hardware, Inc. v. Hargis
Industries, Inc., 575 U.S.__, __(2015) (slip op., at 3);
see also Wal-Mart Stores, Inc. v. Samara Brothers,
Inc., 529 U.S. 205, 212 (2000). A trademark
"designate[s] the goods as the product of a particular
trader" and "protect[s] his good will against the
sale of another's product as his." United Drug
Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918);
see also Hanover Star Milling Co. v. Metcalf, 240
U.S. 403, 412-413 (1916). It helps consumers identify goods
and services that they wish to purchase, as well as those
they want to avoid. See Wal-Mart Stores, supra, at
212-213; Park TV Fly, Inc. v. Dollar Park &
Fly, Inc., 469 U.S. 189, 198 (1985).
law does not create trademarks." B&B
Hardware, supra, at__(slip op., at 3). Trademarks
and their precursors have ancient origins, and trademarks
were protected at common law and in equity at the time of the
founding of our country. 3 J. McCarthy, Trademarks and Unfair
Competition §19:8 (4th ed. 2017) (hereinafter McCarthy);
1 id., §§5:1, 5:2, 5:3; Pattishal, The
Constitutional Foundations of American Trademark Law, 78
Trademark Rep. 456, 457-458 (1988); Pattishall, Two Hundred
Years of American Trademark Law, 68 Trademark Rep. 121,
121-123 (1978); see Trade-Mark Cases, 100 U.S. 82,
92 (1879). For most of the 19th century, trademark protection
was the province of the States. See Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 780-782 (1992)
(Stevens, J., concurring in judgment); id., at 785
(THOMAS, J., concurring in judgment). Eventually, Congress
stepped in to provide a degree of national uniformity,
passing the first federal legislation protecting trademarks
in 1870. See Act of July 8, 1870, §§77-84, 16 Stat.
210-212. The foundation of current federal trademark law is
the Lanham Act, enacted in 1946. See Act of July 5, 1946, ch.
540, 60 Stat. 427. By that time, trademark had expanded far
beyond phrases that do no more than identify a good or
service. Then, as now, trademarks often consisted of catchy
phrases that convey a message.
the Lanham Act, trademarks that are "used in
commerce" may be placed on the "principal register,
" that is, they may be federally registered. 15 U.S.C.
§1051(a)(1). And some marks "capable of
distinguishing [an] applicant's goods or services and not
registrable on the principal register . . . which are in
lawful use in commerce by the owner thereof" may instead
be placed on a different federal register: the supplemental
register. §1091(a). There are now more than two million
marks that have active federal certificates of registration.
PTO Performance and Accountability Report, Fiscal Year 2016,
p. 192 (Table 15), https://www.uspto.gov/sites/default/files/
documents/USPTOFY16PAR.pdf (all Internet materials as last
visited June 16, 2017). This system of federal registration
helps to ensure that trademarks are fully protected and
supports the free flow of commerce. "[N]ational
protection of trademarks is desirable, " we have
explained, "because trademarks foster competition and
the maintenance of quality by securing to the producer the
benefits of good reputation." San Francisco Arts
& Athletics, Inc. v. United States Olympic Comm.,
483 U.S. 522, 531 (1987) (internal quotation marks omitted);
see also Park TV Fly, Inc., supra, at 198
("The Lanham Act provides national protection of
trademarks in order to secure to the owner of the mark the
goodwill of his business and to protect the ability of
consumers to distinguish among competing producers").
federal registration, a valid trademark may still be used in
commerce. See 3 McCarthy §19:8. And an unregistered
trademark can be enforced against would-be infringers in
several ways. Most important, even if a trademark is not
federally registered, it may still be enforceable under
§43(a) of the Lanham Act, which creates a federal cause
of action for trademark infringement. See Two Pesos,
supra, at 768 ("Section 43(a) prohibits a broader
range of practices than does §32, which applies to
registered marks, but it is common ground that §43(a)
protects qualifying unregistered trademarks" (internal
quotation marks and citation omitted)). Unregistered
trademarks may also be entitled to protection under other
federal statutes, such as the Anticybersquatting Consumer
Protection Act, 15 U.S.C. §1125(d). See 5 McCarthy
§25A:49, at 25A-198 ("[T]here is no requirement [in
the Anticybersquatting Act] that the protected 'mark'
be registered: unregistered common law marks are protected by
the Act"). And an unregistered trademark can be enforced
under state common law, or if it has been registered in a
State, under that State's registration system. See 3
id., §19:3, at 19-23 (explaining that
"[t]he federal system of registration and protection
does not preempt parallel state law protection, either by
state common law or state registration" and "[i]n
the vast majority of situations, federal and state trademark
law peacefully coexist"); id., §22:1
(discussing state trademark registration systems).
registration, however, "confers important legal rights
and benefits on trademark owners who register their
marks." B&B Hardware, 575 U.S., at__(slip
op., at 3) (internal quotation marks omitted). Registration
on the principal register (1) "serves as
'constructive notice of the registrant's claim of
ownership' of the mark, " ibid. (quoting 15
U.S.C. §1072); (2) "is 'prima facie evidence of
the validity of the registered mark and of the registration
of the mark, of the owner's ownership of the mark, and of
the owner's exclusive right to use the registered mark in
commerce on or in connection with the goods or services
specified in the certificate, '" B&B
Hardware, 575 U.S. __(slip op., at 3) (quoting §
1057(b)); and (3) can make a mark
"'incontestable'" once a mark has been
registered for five years, " ibid, (quoting
§§1065, 1115(b)); see Park 'N Fly, 469
U.S., at 193. Registration also enables the trademark holder
"to stop the importation into the United States of
articles bearing an infringing mark." 3 McCarthy
§19:9, at 19-38; see 15 U.S.C. §1124.
Lanham Act contains provisions that bar certain trademarks
from the principal register. For example, a trademark cannot
be registered if it is "merely descriptive or
deceptively misdescriptive" of goods, § 1052(e)(1),
or if it is so similar to an already registered trademark or
trade name that it is "likely ... to cause confusion, or
to cause mistake, or to deceive, " § 1052(d).
issue in this case is one such provision, which we will call
"the disparagement clause." This provision
prohibits the registration of a trademark "which may
disparage . . . persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt, or
disrepute." § 1052(a). This clause appeared in the
original Lanham Act and has remained the same to this day.
See §2(a), 60 Stat. 428.
deciding whether a trademark is disparaging, an examiner at
the PTO generally applies a "two-part test." The
examiner first considers "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."
Trademark Manual of Examining Procedure §1203.03(b)(i)
(Apr. 2017), p. 1200-150, http://tmep.uspto.gov.
"If that meaning is found to refer to identifiable
persons, institutions, beliefs or national symbols, "
the examiner moves to the second step, asking "whether
that meaning may be disparaging to a substantial
composite of the referenced group."
Ibid. If the examiner finds that a "substantial
composite, although not necessarily a majority, of the
referenced group would find the proposed mark ... to be
disparaging in the context of contemporary attitudes, "
a prima facie case of disparagement is made out, and the
burden shifts to the applicant to prove that the trademark is
not disparaging. Ibid. What is more, the PTO has
specified that "[t]he fact that an applicant may be a
member of that group or has good intentions underlying its
use of a term does not obviate the fact that a substantial
composite of the referenced group would find the term
Tarn is the lead singer of "The Slants." In re
Tarn, 808 F.3d 1321, 1331 (CA Fed. 2015) (en banc), as
corrected (Feb. 11, 2016). He chose this moniker in order to
"reclaim" and "take ownership" of
stereotypes about people of Asian ethnicity. Ibid,
(internal quotation marks omitted). The group "draws
inspiration for its lyrics from childhood slurs and mocking
nursery rhymes" and has given its albums names such as
"The Yellow Album" and "Slanted Eyes, Slanted
sought federal registration of "THE SLANTS, " on
the principal register, App. 17, but an examining attorney at
the PTO rejected the request, applying the PTO's two-part
framework and finding that "there is ... a substantial
composite of persons who find the term in the applied-for
mark offensive." Id., at 30. The examining
attorney relied in part on the fact that "numerous
dictionaries define 'slants' or 'slant-eyes'
as a derogatory or offensive term." Id., at 29.
The examining attorney also relied on a finding that
"the band's name has been found offensive numerous
times"-citing a performance that was canceled because of
the band's moniker and the fact that "several
bloggers and commenters to articles on the band have
indicated that they find the term and the applied-for mark
offensive." Id., at 29-30.
contested the denial of registration before the examining
attorney and before the PTO's Trademark Trial and Appeal
Board (TTAB) but to no avail. Eventually, he took the case to
federal court, where the en banc Federal Circuit ultimately
found the disparagement clause facially unconstitutional
under the First Amendment's Free Speech Clause. The
majority found that the clause engages in viewpoint-based
discrimination, that the clause regulates the expressive
component of trademarks and consequently cannot be treated as
commercial speech, and that the clause is subject to and
cannot satisfy strict scrutiny. See 808 F.3d, at 1334-1339.
The majority also rejected the Government's argument that
registered trademarks constitute government speech, as well
as the Government's contention that federal registration
is a form of government subsidy. See id., at
1339-1355. And the majority opined that even if the
disparagement clause were analyzed under this Court's
commercial speech cases, the clause would fail the
"intermediate scrutiny" that those cases prescribe.
See id., at 1355-1357.
judges wrote separately, advancing an assortment of theories.
Concurring, Judge O'Malley agreed with the majority's
reasoning but added that the disparagement clause is
unconstitutionally vague. See id., at 1358-1363.
Judge Dyk concurred in part and dissented in part. He argued
that trademark registration is a government subsidy and that
the disparagement clause is facially constitutional, but he
found the clause unconstitutional as applied to THE SLANTS
because that mark constitutes "core expression" and
was not adopted for the purpose of disparaging
Asian-Americans. See id., at 1363-1374. In dissent,
Judge Lourie agreed with Judge Dyk that the clause is
facially constitutional but concluded for a variety of
reasons that it is also constitutional as applied in this
case. See id., at 1374-1376. Judge Reyna also
dissented, maintaining that trademarks are commercial speech
and that the disparagement clause survives intermediate
scrutiny because it "directly advances the
government's substantial interest in the orderly flow of
commerce." See id., at 1376-1382.
Government filed a petition for certiorari, which we granted
in order to decide whether the disparagement clause "is
facially invalid under the Free Speech Clause of the First
Amendment." Pet. for Cert, i; see sub. nom. Lee v.
Tarn, 579 U.S.__(2016).
reaching the question whether the disparagement clause
violates the First Amendment, we consider Tarn's argument
that the clause does not reach marks that disparage racial or
ethnic groups. The clause prohibits the registration of marks
that disparage "persons, " and Tarn claims that the
term "persons" "includes only natural and
juristic persons, " not "non-juristic entities such
as racial and ethnic groups." Brief for Respondent 46.
never raised this argument before the PTO or the Federal
Circuit, and we declined to grant certiorari on this question
when Tarn asked us to do so, see Brief Responding to Petition
for Certiorari, pp. i, 17-21. Normally, that would be the end
of the matter in this Court. See, e.g., Yee v.
Escondido,503 U.S. 519, 534-538 (1992); Freytag v.