WASHINGTON, DC — The U.S. Supreme Court has agreed to determine the constitutionality of a federal trademark statute that allows the government to reject trademark applications for names that might be offensive to certain persons or groups such as “The Slants,” an Asian-American dance rock band, whose trademark application was denied by the U.S. Patent and Trademark Office (PTO) on the grounds that the trademark might disparage or offend persons of Asian heritage (even though the applicant himself is of Asian heritage).
In coming to the defense of The Slants, attorneys for The Rutherford Institute contend that the federal statute openly discriminates against speech on the basis of content and viewpoint, violating the most fundamental constitutional guarantees to freedom of expression under the First Amendment. In December 2015, a federal appeals court ruled in favor of The Slants, declaring that the government cannot refuse to register trademark applications because it disapproves of the expressive messages conveyed by the marks. A decision in In re: Simon Shiao Tam will affect not only the registration of “The Slants” trademark but also the registration of the trademark for the Washington Redskins football team, which was cancelled on the grounds that it was “disparaging” of Native Americans.
“Whether the debate is over a trademark for The Slants or the Redskins, or a specialty license plate for the Sons of Confederate Veterans, the sticking point remains the same: how much do we really value the First Amendment, and how far are we willing to go to protect someone else’s freedom of speech, even if that speech might be offensive to some?” asked constitutional attorney John W. Whitehead, president of The Rutherford Institute and author of Battlefield America: The War on the American People. “Whatever the rationale for criminalizing speech, the end result remains the same: outright censorship and the creation of a class system that renders speech perceived as politically incorrect, hateful or offensive as inferior and less entitled to the full protection of the law.”
Simon Shiao Tam is the front man for an Asian-American dance rock band called “The Slants.” Tam, who is of Asian descent and heritage, has previously stated that the reason the name was chosen for the band was that he and the other members wanted to “take on” the stereotypes of Asians and “own them”; the band is proud of their Asian heritage and does not want to hide it from the public. Tam also has indicated that the response he has received to the band’s name from the Asian community has been very positive. Nonetheless, when Tam applied with the PTO to have “The Slants” registered as a trademark, the application was denied under a provision of the federal statutes which allows the PTO to refuse to register a trademark that “[c]onsists of or comprises 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.” Tam appealed the decision and argued that the statute violated the First Amendment because it discriminated against expression on the basis of the viewpoint of the speaker and was unduly vague. Although the U.S. Court of Appeals for the Federal Circuit initially upheld the denial of registration, it agreed to rehear the case. In December 2015, the Appeals Court ruled the statute to be unconstitutional, finding that the government had offered no legitimate interests justifying such regulation of commercial speech.
Affiliate attorneys Megan L. Brown, Joshua Turner, Christopher Kelly, Jennifer Elgin, and Dwayne D. Sam of Wiley Rein LLP in Washington, D.C., assisted The Rutherford Institute and The Cato Institute in advancing the arguments in the Tam brief.