## Facts

- Simon Shiao Tam, lead member of an Asian-American band, used the name “The Slants” to reclaim a derogatory term directed at people of Asian descent.
- Tam applied to register the mark “THE SLANTS” for live musical performances.
- A USPTO examining attorney refused registration under Lanham Act § 2(a), concluding the mark “may disparage” persons of Asian descent.
- The Trademark Trial and Appeal Board affirmed, applying a two-part test: (1) the mark refers to identifiable persons/groups; and (2) a substantial composite of the referenced group would find it disparaging.
- A Federal Circuit panel initially affirmed based on precedent stating that denial of registration does not implicate the First Amendment because the applicant may still use the mark.
- The Federal Circuit granted rehearing en banc to consider whether § 2(a)’s disparagement clause violates the First Amendment.

## Issues

1. Whether Lanham Act § 2(a)’s disparagement clause imposes an unconstitutional burden on speech by discriminating based on content and viewpoint.
2. Whether trademark registration constitutes government speech, a government subsidy, or a regulation of commercial speech such that viewpoint-based conditions on registration are permissible.
3. Whether § 2(a) is unconstitutionally vague due to lack of clear standards for “disparagement,” enabling arbitrary enforcement.

## Decision

- The en banc Federal Circuit reversed the TTAB and held § 2(a)’s disparagement clause unconstitutional under the First Amendment.
- The court concluded the clause is viewpoint discriminatory because it permits registration of positive or neutral references to groups but denies registration of negative references.
- The court rejected the government-speech theory because trademarks are created and used by private parties and registered marks reflect inconsistent and competing messages.
- The court rejected characterizing registration as a government subsidy because the scheme confers legal benefits through regulation rather than governmental funding of speech.
- Even assuming trademarks are commercial speech, the disparagement clause failed heightened review because the asserted interests did not justify viewpoint-based burdens.
- The court stated that denial of registration imposes a meaningful burden by withholding significant statutory benefits and thus can implicate the First Amendment.
- Vagueness concerns reinforced the constitutional problem, given the subjective and inconsistently applied standard for disparagement.
- The case was remanded for further proceedings consistent with the constitutional holding.

## Legal Principles

- Viewpoint discrimination is presumptively unconstitutional; the government may not condition legal benefits on whether private speech expresses an approved viewpoint.
- Trademark registration is generally private speech, not government speech, merely because the government administers a registry.
- A regulatory program that confers legal advantages is not treated as a discretionary speech subsidy when it functions as a generally available set of statutory benefits.
- The First Amendment protects offensive and disparaging expression; government disapproval of a message is not, by itself, a sufficient basis to deny legal protections.
- A denial of trademark registration may burden speech by withholding significant legal benefits, even if the applicant remains free to use the mark.
- Vague statutory standards that turn on subjective judgments and produce inconsistent outcomes raise due process and First Amendment concerns.

## Conclusion

The Federal Circuit held that Lanham Act § 2(a)’s disparagement clause violates the First Amendment because it denies trademark registration based on viewpoint, and the refusal cannot be justified as government speech, a subsidy, or a valid regulation of commercial speech.


In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc)