On Wednesday, January 18, 2017, the U.S. Supreme Court heard oral argument in Lee v. Tam, a case reviewing the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam holding that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), was facially invalid under the First Amendment of the United States Constitution. The issue before the Supreme Court is whether the disparagement provision, which prohibits the government from registering trademarks that contain “matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the First Amendment.
In 2006, Simon Shiao Tam, an Asian-American, formed The Slants, an Asian-American dance-rock band. Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. In 2011, Mr. Tam filed an application (App. No. 85/472,044) seeking to register the mark THE SLANTS. Relying on the disparagement provision, the U.S. Patent and Trademark Office (PTO) rejected Mr. Tam’s application on the grounds that the band’s name was disparaging to Asian-Americans. The PTO found that even though Mr. Tam may have chosen the mark to “reappropriate the disparaging term,” “a substantial composite of persons of Asian descent would find the term offensive.”
The Trademark Trial and Appeal Board (TTAB) affirmed the PTO’s refusal to register the...
