throbber
No. 15-1293
`
`
`In the
`Supreme Court of the United States
`_________________________
`
`MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED
`STATES PATENT AND TRADEMARK OFFICE,
`Petitioner,
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`V.
`SIMON SHIAO TAM,
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`Respondent.
`_________________________
`
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`_________________________
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`BRIEF FOR RESPONDENT
`_________________________
`STUART BANNER
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` JOHN C. CONNELL
`EUGENE VOLOKH
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`
` Counsel of Record
` RONALD D. COLEMAN
`UCLA School of Law
`Supreme Court Clinic JOEL G. MACMULL
`405 Hilgard Ave.
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` Archer & Greiner, P.C.
`Los Angeles, CA 90095 One Centennial Square
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` P.O. Box 3000
` Haddonfield, NJ 08033
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`(856) 795-2121
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`jconnell@archerlaw.com
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`QUESTIONS PRESENTED
`The disparagement clause in section 2(a) of the
`Lanham Act, 15 U.S.C. § 1052(a), prohibits the regis-
`tration of a trademark that “may disparage … per-
`sons, living or dead, institutions, beliefs, or national
`symbols, or bring them into contempt, or disrepute.”
`The Questions Presented are:
`1. Whether the disparagement clause bars the
`registration of respondent’s trademark.
`2. Whether the disparagement clause is contrary
`to the First Amendment.
`3. Whether the disparagement clause is uncon-
`stitutionally vague under the First and Fifth
`Amendments.
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`

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`ii
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`TABLE OF CONTENTS
`QUESTIONS PRESENTED ....................................... i
`TABLE OF AUTHORITIES ..................................... iii
`STATEMENT .............................................................. 1
`ARGUMENT ............................................................ 10
`I. Certiorari should be granted. ............................. 10
`II. The judgment of the Court of Appeals
`should be affirmed. ............................................. 13
`A. The Lanham Act’s disparagement
`clause does not bar the registration
`of respondent’s trademark. ........................... 13
`B. The Lanham Act’s disparagement
`clause
`is contrary to the First
`Amendment. .................................................. 21
`C. The Lanham Act’s disparagement
`clause is unconstitutionally vague. ............... 30
`CONCLUSION ......................................................... 34
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`

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`iii
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`TABLE OF AUTHORITIES
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`CASES
`14 Penn Plaza LLC v. Pyett, 556 U.S. 247
`(2009) ..................................................................... 12
`Agency for Int’l Dev. v. Alliance for Open
`Soc’y Int’l, Inc., 133 S. Ct. 2321 (2013) ....... 8, 26, 27
`B & B Hardware, Inc. v. Hargis Indus., Inc.,
`135 S. Ct. 1293 (2015) ........................................... 22
`Bolger v. Youngs Drug Prods. Corp., 463 U.S.
`60 (1983) ................................................................ 24
`Bond v. United States, 134 S. Ct. 2077
`(2014) ..................................................................... 12
`Brown v. Entertainment Merchants Ass’n,
`564 U.S. 786 (2011) ............................................... 24
`Carey v. Population Servs., Int’l, 431 U.S.
`678 (1977) .............................................................. 24
`Central Hudson Gas & Elec. Corp. v. Public
`Serv. Comm’n, 447 U.S. 557 (1980) ...................... 30
`Coates v. City of Cincinnati, 402 U.S. 611
`(1971) ..................................................................... 31
`Davenport v. Washington Educ. Ass’n, 551
`U.S. 177 (2007) ...................................................... 26
`FCC v. Fox Television Stations, Inc., 132 S.
`Ct. 2307 (2012) ...................................................... 30
`Forsyth Cty. v. Nationalist Movement, 505
`U.S. 123 (1992) ...................................................... 24
`Friedman v. Rogers, 440 U.S. 1 (1979) .............. 28, 29
`Grayned v. City of Rockford, 408 U.S. 104
`(1972) ..................................................................... 33
`Hustler Magazine, Inc. v. Falwell, 485 U.S.
`46 (1988) ................................................................ 24
`In re McGinley, 660 F.2d 481 (C.C.P.A.
`1981) ......................................................................... 5
`
`

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`
`
`iv
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`KP Permanent Make-Up, Inc. v. Lasting
`Impression I, Inc., 543 U.S. 111 (2004) ................. 22
`Leathers v. Medlock, 499 U.S. 439 (1991) ............... 25
`Legal Servs. Corp. v. Velazquez, 531 U.S. 533
`(2001) ..................................................................... 26
`NEA v. Finley, 524 U.S. 569 (1998) ................... 26, 27
`R.A.V. v. City of St. Paul, 505 U.S. 377
`(1992) ..................................................................... 30
`Reed v. Town of Gilbert, 135 S. Ct. 2218
`(2015) ..................................................................... 23
`Regan v. Taxation With Representation of
`Wash., 461 U.S. 540 (1983) ................................... 26
`Reno v. ACLU, 521 U.S. 844 (1997) ......................... 33
`Riley v. Nat’l Fed’n of the Blind, 487 U.S. 781
`(1988) ..................................................................... 29
`Rosenberger v. Rector and Visitors of the
`Univ. of Va., 515 U.S. 819 (1995) .......................... 21
`Rust v. Sullivan, 500 U.S. 173 (1991) ..................... 26
`Simon & Schuster, Inc. v. Members of the
`N.Y. Crime Victims Bd., 502 U.S. 105
`(1991) ..................................................................... 25
`Snyder v. Phelps, 562 U.S. 443 (2011) ..................... 24
`Sorrell v. IMS Health Inc., 564 U.S. 552
`(2011) ............................................................... 25, 29
`Texas v. Johnson, 491 U.S. 397 (1989) .................... 24
`Thompson v. Western States Med. Ctr., 535
`U.S. 357 (2002) ...................................................... 30
`United States v. Playboy Entertainment
`Group, Inc., 529 U.S. 803 (2000) ........................... 25
`Village of Hoffman Estates v. Flipside,
`Hoffman Estates, Inc., 455 U.S. 489 (1982) .......... 31
`Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
`529 U.S. 205 (2000) ............................................... 22
`
`

`
` v
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`Walker v. Texas Div., Sons of Confederate
`Veterans, Inc., 135 S. Ct. 2239 (2015) ............. 27, 28
`Ysursa v. Pocatello Educ. Ass’n, 555 U.S. 353
`(2009) ..................................................................... 26
`ADMINISTRATIVE DECISIONS
`Boswell v. Mavety Media Group Ltd., 52
`U.S.P.Q.2d 1600, 1999 WL 1040108 (TTAB
`1999) ...................................................................... 17
`In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071,
`2008 WL 5065114 (TTAB 2008) ........................ 2, 32
`STATUTES
`15 U.S.C. § 1052(a) ........................................... passim
`15 U.S.C. § 1057(b) ................................................... 22
`15 U.S.C. § 1065 ....................................................... 23
`15 U.S.C. § 1072 ....................................................... 22
`15 U.S.C. § 1115(a) ................................................... 22
`15 U.S.C. § 1115(b) ................................................... 23
`15 U.S.C. § 1127 ....................................................... 17
`LEGISLATIVE MATERIAL
`60 Stat. 427 (1946) ................................................... 20
`H.R. 4744, 76th Cong., 1st Sess. (1939),
`§ 2(a) ...................................................................... 19
`H.R. Rep. No. 219, 79th Cong., 1st Sess.
`(1945) ..................................................................... 20
`Inter-American Convention for Trade Mark
`and Commercial Protection. 46 Stat. 2907
`(1931) ..................................................................... 20
`S. Rep. No. 1333, 79th Cong., 2d Sess. 5
`(1946) ..................................................................... 20
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`vi
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`Trade-Marks: Hearings on H.R. 4744 Before
`the Subcomm. on Trade-Marks of the H.
`Comm. on Patents, 76th Cong., 1st Sess.
`(1939) ..................................................................... 20
`OTHER AUTHORITIES
`Randall Kennedy, Nigger: The Strange
`Career of a Troublesome Word (2002) ..................... 2
`McCarthy on Trademarks and Unfair
`Competition (4th ed. Westlaw) .............................. 27
`Donald S. Passman, All You Need to Know
`About the Music Business (8th ed. 2012) .............. 23
`Pet.
`for Cert., Pro-Football,
`Inc.
`v.
`Blackhorse, No. 15-1311 (filed Apr. 25,
`2016) ...................................................................... 11
`Richard Stim, Music Law: How to Run Your
`Band’s Business (8th ed. 2015) ............................. 23
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`STATEMENT
`In the decision below, the en banc Court of Ap-
`peals correctly held that the disparagement clause of
`the Lanham Act is contrary to the First Amendment.
`This provision bars the registration of a trademark
`that “may disparage … persons, living or dead.” 15
`U.S.C. § 1052(a). As the Court of Appeals found, the
`disparagement clause discriminates on the basis of
`viewpoint and content, by imposing a substantial
`burden on speech with a particular message. The
`government offers no justification for this discrimi-
`natory burden on speech other than its interest in
`preventing offense to listeners, but that is not a valid
`basis for restricting expression.
`Certiorari should nevertheless be granted. This
`issue is undeniably important. The Court is very
`likely to address it in the near future, in another
`case if not in this one. Meanwhile, respondent Simon
`Tam waits in limbo. His trademark rights will not be
`secure until the Court resolves this issue once and
`for all.
`1. Simon Tam is an Asian-American musician, lec-
`turer, and political activist. He is the founder and
`leader of The Slants, a rock band based in Portland,
`Oregon. When Tam formed the band in 2006, his
`purpose was not just to play music. He also intended
`the band to be a vehicle for expressing his views on
`discrimination against Asian-Americans. To that
`end, he recruited Asian-American band members,
`and he called the band The Slants.
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`In choosing that name, Tam was following in the
`long tradition of “reappropriation,” in which mem-
`bers of minority groups have reclaimed terms that
`were once directed at them as insults and turned
`them outward as badges of pride. In recent times,
`the most conspicuous examples have been words
`such as “queer,” “dyke,” and so on—formerly deroga-
`tory terms that have been so successfully adopted by
`members of the gay and lesbian community that
`they have now lost most, if not all, of their pejorative
`connotations. Members of several other groups have
`pursued the same strategy. As Randall Kennedy ob-
`serves:
`Many blacks also do with nigger what other
`members of marginalized groups have done
`with slurs aimed at shaming them. They have
`thrown the slur right back in their oppressors’
`faces. They have added a positive meaning to
`nigger, just as women, gays, lesbians, poor
`whites, and children born out of wedlock have
`defiantly appropriated and revalued such
`words as bitch, cunt, queer, dyke, redneck,
`cracker, and bastard.
`Randall Kennedy, Nigger: The Strange Career of a
`Troublesome Word 48 (2002).1
`
`1 Before the PTO, Tam did not characterize his use of the name
`as reappropriation, because TTAB precedent foreclosed the ar-
`gument that reappropriation of a term can render a mark non-
`disparaging. See In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071,
`2008 WL 5065114 (TTAB 2008). The TTAB nevertheless recog-
`nized that Tam’s use of the name was “an attempt … to wrest
`‘ownership’ of the term from those who might use it with the
`intent to disparage.” Pet. App. 175a. The Court of Appeals
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`Tam aimed to do the same for Asian-Americans.
`“We want to take on these stereotypes that people
`have about us, like the slanted eyes, and own them,”
`he explained. Fed. Cir. JA 4. He observed: “For our
`band, we’re not just Chinese, we’re not just Viet-
`namese, we’re kind of a pan-Asian band that cele-
`brates all the different Asian cultures out there ….
`Everyone in the band really loves the fact that we
`can try and empower Asian Americans and say, ‘You
`know what? We are slanted. Who cares? We’re proud
`of that.’” Fed. Cir. JA 45.
`In their music, as the Court of Appeals found,
`“Mr. Tam and his band weigh in on cultural and po-
`litical discussions about race and society.” Pet. App.
`10a. Sometimes that takes the form of wry commen-
`tary. The Slants’ first album is called “Slanted Eyes,
`Slanted Hearts.” Their fourth is “The Yellow Al-
`bum,” a title that combines references to the Beatles’
`1968 “White Album” and Jay-Z’s 2003 “Black Album”
`with a reference to the once-common use of the color
`yellow to refer pejoratively to Asians, as in the
`phrase “Yellow Peril.”
`At other times, The Slants come closer to straight-
`forward advocacy. For example, the chorus of their
`song “Sakura, Sakura” is:
`We sing for the Japanese and the Chinese and
`all the dirty knees.
`
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`likewise recognized that Tam “seeks to shift the meaning of,
`and thereby reclaim, an emotionally charged word.” Pet. App.
`24a.
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`Can you see me? We sing in harmony for the
`babies in the alleys.
`The title of “Sakura, Sakura” refers to the well-
`known Japanese folk song of the same name (“sa-
`kura” is Japanese for “cherry blossom”). The Slants’
`song incorporates part of the melody of the folk song.
`The first line of the chorus recalls a schoolyard taunt
`familiar to many Asian-Americans—“Chinese, Japa-
`nese, dirty knees, look at these.” As Tam has ex-
`plained, The Slants “feel strongly that Asians should
`be proud of their cultural heritage, and not be of-
`fended by stereotypical descriptions.” Pet. App. 10a
`(brackets omitted).
`In 2011, Tam sought to register THE SLANTS as a
`trademark. Pet. App. 10a. The examiner refused to
`register the mark, on the ground that it is disparag-
`ing to “persons of Asian descent.” Pet. App. 10a.
`2. The Trademark Trial and Appeal Board af-
`firmed. Pet. App. 162a-182a. The Board acknowl-
`edged that Tam’s purpose in naming his band The
`Slants was “an attempt not to disparage, but rather
`to wrest ‘ownership’ of the term from those who
`might use it with the intent to disparage.” Pet. App.
`175a. The Board nevertheless determined that “[t]he
`evidence of public perception of the meaning of THE
`SLANTS, as used in connection with applicant’s ser-
`vices, shows that meaning to be a derogatory refer-
`ence to people of Asian descent.” Pet. App. 174a. The
`Board concluded that “[t]he fact that applicant has
`good intentions underlying his use of the term does
`not obviate the fact that a substantial composite of
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`the referenced group find the term objectionable.”
`Pet. App. 181a.
`Tam appealed to the Court of Appeals for the Fed-
`eral Circuit. He argued that the Board erred in find-
`ing his trademark unregistrable under section 2(a) of
`the Lanham Act, and that section 2(a)’s disparage-
`ment clause is contrary to the First Amendment and
`unconstitutionally vague.
`3. A panel of the Court of Appeals affirmed. Pet.
`App. 123a-161a. The Court of Appeals found that
`“[t]he evidence here supports the Board’s finding
`that the mark THE SLANTS likely refers to people of
`Asian descent.” Pet. App. 128a. The court also found
`that “[s]ubstantial evidence supports the Board’s
`finding that the mark THE SLANTS is likely offensive
`to a substantial composite of people of Asian de-
`scent.” Pet. App. 130a. The Court of Appeals relied
`on the precedent of its predecessor court, the Court
`of Customs and Patent Appeals, to reject Tam’s con-
`stitutional arguments. Pet. App. 131a-132a (citing In
`re McGinley, 660 F.2d 481 (C.C.P.A. 1981)).
`Judge Moore wrote a separate opinion urging the
`Court of Appeals to reconsider the constitutionality
`of section 2(a)’s disparagement clause. Pet. App.
`135a-161a (Moore, J., additional views).
`4. The en banc Court of Appeals vacated the
`Board’s decision and remanded the case to the Board
`for further proceedings. Pet. App. 1a-122a. The court
`began by observing that “Mr. Simon Shiao Tam
`named his band THE SLANTS to make a statement
`about racial and cultural issues in this country. With
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`his band name, Mr. Tam conveys more about our so-
`ciety than many volumes of undisputedly protected
`speech.” Pet. App. 2a. The en banc court reinstated
`the panel’s holding that the name is “disparaging”
`and is thus unregistrable under section 2(a). Pet.
`App. 12a n.3. But the en banc court held that section
`2(a)’s disparagement clause is contrary to the First
`Amendment.
`The Court of Appeals concluded that the dispar-
`agement clause discriminates on the basis of view-
`point and content. As the court observed, “[t]he PTO
`rejects marks under § 2(a) when it finds the marks
`refer to a group in a negative way, but it permits the
`registration of marks that refer to a group in a posi-
`tive, non-disparaging manner.” Pet. App. 21a. The
`court concluded: “Section 2(a)
`is a viewpoint-
`discriminatory regulation of speech, created and ap-
`plied in order to stifle the use of certain disfavored
`messages. Strict scrutiny therefore governs its First
`Amendment assessment—and no argument has been
`made that the measure survives such scrutiny.” Pet.
`App. 23a-24a.
`The Court of Appeals further held that the dis-
`paragement clause could not be upheld as a regula-
`tion of commercial speech. The court noted that the
`disparagement clause regulates the expressive as-
`pects of a trademark, not the mark’s commercial
`function as the identifier of the source of a good or
`service. Pet. App. 24a. “Importantly,” the court not-
`ed, “every time the PTO refuses to register a mark
`under § 2(a), it does so because it believes the mark
`conveys an expressive message—a message that is
`disparaging to certain groups.” Pet. App. 25a. The
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`court observed that the First Amendment does not
`permit content-based regulation of commercial
`speech where the discrimination is based on the
`speech’s expressive features. Pet. App. 25a-26a.
`The Court of Appeals rejected the government’s
`contention that section 2(a) restricts no speech and
`is thus immune from First Amendment scrutiny.
`Pet. App. 28a-40a. The court observed that the First
`Amendment prohibits content-based and viewpoint-
`based burdens on speech, just as it prohibits similar-
`ly discriminatory bans on speech. Pet. App. 28a-30a.
`The court recognized that the legal advantages of
`trademark registration are so significant that “the
`§ 2(a) bar on registration creates a strong disincen-
`tive to choose a ‘disparaging’ mark.” Pet. App. 32a.
`The Court of Appeals also rejected the govern-
`ment’s suggestion that trademarks should receive no
`First Amendment protection on the theory that
`trademark registrations are government speech. Pet.
`App. 40a-47a. The court held that registration does
`not change the fact that trademarks are private
`speech, not government speech. Pet. App. 40a-41a.
`The court further held that the accoutrements of reg-
`istration, such as the registrant’s right to use the ®
`symbol, the placement of the mark on the Principal
`Register, and the PTO’s issuance of a registration
`certificate, “do not convert the underlying speech to
`government speech.” Pet. App. 41a. As the court not-
`ed, “the PTO routinely registers marks that no one
`can say the government endorses,” such as CAPITAL-
`ISM SUCKS DONKEY BALLS and MURDER 4 HIRE. Pet.
`App. 43a. The court observed, moreover, that
`“[c]opyright registration has
`identical accoutre-
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`ments,” so the government’s theory would allow it to
`deny copyrights to works that disparaged others, an
`outcome that would clearly violate the First
`Amendment. Pet. App. 41a.
`The Court of Appeals likewise rejected, on two
`grounds, the government’s argument that section
`2(a) is a government subsidy exempt from strict
`scrutiny. Pet. App. 47a-61a. First, the court noted
`that under the unconstitutional conditions doctrine,
`the government may not attach “‘conditions that
`seek to leverage funding to regulate speech outside
`the contours of the program itself.’” Pet. App. 51a
`(quoting Agency for Int’l Dev. v. Alliance for Open
`Soc’y Int’l, Inc., 133 S. Ct. 2321, 2328 (2013)). Be-
`cause trademark registration “is not a program
`through which the government is seeking to get its
`message out through recipients of funding,” the court
`held, the government cannot condition trademark
`registration on the avoidance of a particular view-
`point. Pet. App. 52a.
`Second, the Court of Appeals determined that
`trademark registration is not a subsidy. Pet. App.
`52a-61a. As the court noted, “the subsidy cases have
`all involved government funding or government
`property.” Pet. App. 53a. Trademark registration, by
`contrast, involves neither. “Unlike a subsidy consist-
`ing of, for example, HIV/AIDS funding, or tax ex-
`emptions, a trademark registration does not directly
`affect the public fisc,” the court concluded. “Instead,
`a registered trademark redefines the nature of the
`markholder’s rights as against the rights of other cit-
`izens.” Pet. App. 57a. Thus “the system of trademark
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`registration is a regulatory regime, not a govern-
`ment subsidy program.” Pet. App. 57a.
`Finally, the Court of Appeals held that section
`2(a)’s bar on disparaging trademarks would be con-
`trary to the First Amendment even if it were classi-
`fied as a regulation of commercial speech. Pet. App.
`61a-67a. Under the intermediate scrutiny applicable
`to commercial speech, regulation must advance a
`substantial government interest, but the court found
`that “§ 2(a) immediately fails at this step,” because
`“[t]he entire interest of the government in § 2(a) de-
`pends on disapproval of the message.” Pet. App. 63a.
`Judge O’Malley, joined by Judge Wallach, filed a
`concurring opinion. Pet. App. 68a-80a. She agreed
`that section 2(a)’s disparagement clause is contrary
`to the First Amendment. She also concluded that the
`disparagement clause is unconstitutionally vague.
`Judge Dyk filed an opinion concurring in part and
`dissenting in part, which Judges Lourie and Reyna
`joined in part. Pet. App. 80a-104a. He concluded that
`section 2(a)’s disparagement clause is contrary to the
`First Amendment only as applied to marks, such as
`Simon Tam’s, that are “both political and commer-
`cial.” Pet. App. 102a. He would have upheld the
`clause as applied to “routine product identifiers,”
`Pet. App. 89a, which he characterized as trademarks
`that “lack the kind of ‘expressive character’ that
`would merit First Amendment protection for offen-
`sive content.” Pet. App. 90a.
`Judge Lourie dissented. Pet. App. 104a-108a. In
`his view, the PTO’s refusal to register a trademark
`“is not a denial of an applicant’s right of free speech,”
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`because “Mr. Tam may use his trademark as he
`likes” even without federal registration. Pet. App.
`105a.
`Judge Reyna also dissented. Pet. App. 108a-122a.
`He concluded that trademarks are commercial
`speech and that section 2(a)’s disparagement clause
`satisfies the intermediate scrutiny applicable to
`commercial speech, in light of the “the government’s
`substantial interest in the orderly flow of commerce.”
`Pet. App. 119a.
`
`ARGUMENT
`The government’s petition for certiorari should be
`granted, but the Questions Presented should be re-
`formulated to reflect the issues in this case.
`I. Certiorari should be granted.
`The decision below is correct. The Court should
`nevertheless grant the petition for certiorari, for
`three reasons.
`First, the issue is undeniably important. The
`Court of Appeals has invalidated a provision of the
`Lanham Act, a statute that plays a major role in
`regulating commerce. The constitutionality of section
`2(a)’s disparagement clause is likely to return to the
`Court repeatedly in future cases until the Court puts
`the issue to rest.
`Second, although Simon Tam prevailed in the
`Court of Appeals, his trademark rights will not be
`secure until this Court decides the issue once and for
`all. If the Court denies certiorari in this case, even if
`the PTO registers Tam’s trademark, his registration
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`will be precarious, because of the possibility that the
`decision below will be overruled by this Court in a
`future case.
`One such case has already reached the Court. The
`Washington Redskins have filed a petition for certio-
`rari before judgment in a case that raises the same
`First Amendment and vagueness issues as does this
`case. Pet. for Cert., Pro-Football, Inc. v. Blackhorse,
`No. 15-1311 (filed Apr. 25, 2016). If the Court wishes
`to hear the two cases together, we urge the Court to
`do so now rather than waiting until the Fourth Cir-
`cuit has decided the Redskins’ case. It has already
`been five years since Simon Tam filed his trademark
`application. The PTO has halted the processing of all
`trademark applications raising disparagement is-
`sues, including Tam’s, until the Court disposes of the
`government’s certiorari petition in this case. Pet. 23.
`The Fourth Circuit has not yet held oral argument,
`so there may be no resolution of the Redskins’ case
`for a year or more, particularly if the Fourth Circuit
`takes the case en banc. The Court should not hold
`this case for the Redskins’ case.
`Third, this case is an excellent vehicle. Simon
`Tam’s trademark undisputedly has an expressive
`component along with a commercial component, so
`the Court will be able to evaluate the First Amend-
`ment’s applicability to the full range of conceivable
`types of trademarks.
`Moreover, this case involves two other important
`issues that are not captured by the government’s
`unduly narrow Question Presented.
`
`

`
`
`
`12
`
`
`
`
`The first of these issues is one of statutory inter-
`pretation. Under section 2(a) of the Lanham Act,
`does THE SLANTS “disparage … persons, living or
`dead”? At every stage of this litigation, Simon Tam
`has argued that section 2(a) does not bar the regis-
`tration of his trademark. He is thus entitled to de-
`fend the judgment below on this ground. 14 Penn
`Plaza LLC v. Pyett, 556 U.S. 247, 273 (2009). Even if
`that were not so, “it is a well-established principle
`governing the prudent exercise of this Court's juris-
`diction that normally the Court will not decide a
`constitutional question if there is some other ground
`upon which to dispose of the case.” Bond v. United
`States, 134 S. Ct. 2077, 2087 (2014) (citation and in-
`ternal quotation marks omitted). A proper interpre-
`tation of section 2(a) is such a ground.
`Section 2(a)’s disparagement clause has existed
`for 70 years, but the Court has never interpreted it.
`The PTO has been left to develop its own disparage-
`ment jurisprudence, which has wandered ever far-
`ther from the statute’s text and from any reasonable
`understanding of what Congress intended. This case
`provides an opportunity for the Court to guide the
`PTO back to the text of the statute.
`The second issue not captured by the govern-
`ment’s Question Presented is whether section 2(a)’s
`disparagement clause is unconstitutionally vague.
`Simon Tam raised this issue below as well, so he is
`entitled to defend the Court of Appeals’ judgment on
`this ground.
`This is another issue the Court has never consid-
`ered in the 70 years since the disparagement clause
`
`

`
`
`
`13
`
`
`
`was enacted. The PTO, left to its own devices, has
`produced a bewildering array of decisions granting
`or denying registration seemingly at random. As the
`Court of Appeals found, “[t]he PTO’s record of
`trademark registrations and denials often appears
`arbitrary and is rife with inconsistency.… We see no
`rationale for the PTO’s seemingly arbitrary registra-
`tion decisions, let alone one that would give appli-
`cants much guidance.” Pet. App. 33a n.7. As the two
`concurring judges found, the disparagement clause is
`“so vague that [it is] unconstitutional, whether or not
`it could survive Appellant’s First Amendment chal-
`lenge.” Pet. App. 69a (O’Malley, J., concurring). It is
`time for this Court to intervene.
`II. The judgment of the Court of Appeals
`should be affirmed.
`The judgment below should be affirmed, on any of
`three grounds. First, as a matter of statutory con-
`struction, respondent’s trademark does not “dispar-
`age … persons, living or dead” under section 2(a).
`Second, the disparagement clause is contrary to the
`First Amendment. Third, the disparagement clause
`is unconstitutionally vague under the First and Fifth
`Amendments.
`A. The Lanham Act’s disparagement
`clause does not bar the registration
`of respondent’s trademark.
`Section 2(a)’s disparagement clause prohibits the
`registration of a trademark that “[c]onsists of or
`comprises … matter which may disparage … per-
`sons, living or dead, institutions, beliefs, or national
`
`

`
`
`
`14
`
`
`
`symbols, or bring them into contempt, or disrepute.”
`15 U.S.C. § 1052(a). This clause does not bar regis-
`tration of THE SLANTS, for two reasons. First, the
`mark is simply not disparaging. Second, the statuto-
`ry phrase “persons, living or dead” refers solely to
`natural and juristic persons, not to non-juristic col-
`lective entities like racial or ethnic groups.
`1. THE SLANTS, as used by Simon Tam to refer to
`his band, is not disparaging. Whether a word is dis-
`paraging depends primarily on context. Even “nig-
`ger” and its variants are not disparaging when used
`with pride and understood that way. For example,
`one of the most well-known and influential musical
`groups of the 1980s and 1990s was N.W.A., which
`fans knew stood for “Niggaz Wit Attitudes.” (Anyone
`who did not know would have figured it out when
`the group released their second album, Niggaz4Life.)
`“Niggers” or “niggaz” can certainly be used in a dis-
`paraging way, but the members of N.W.A. did not
`use the word that way, and the group’s millions of
`fans did not interpret the name as disparaging.
`The same is true of The Slants. Simon Tam and
`his band members are not disparaging Asian-
`Americans. They are doing precisely the opposite;
`they are appropriating a slur and using it as a badge
`of pride. Simon Tam is not a bigot; he is fighting big-
`otry with the time-honored technique of seizing the
`bigots’ own language. “Slant” can certainly be used
`in a disparaging way, but Tam is not using it that
`way. Even the most cursory awareness of the Slants’
`music and the way it is packaged makes that clear.
`
`

`
`
`
`15
`
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`
`
`Nor do the Slants’ fans think the band’s name is
`disparaging. The Slants’ fans are not racists eager to
`denigrate Asian-Americans. They are people who
`understand and appreciate what the Slants are do-
`ing. They get it. Only an uninformed philistine could
`find the band’s name disparaging.
`If the PTO interpreted the statute literally, with a
`dose of common sense, that would be enough to find
`that THE SLANTS does not “disparage” anyone. But
`rather than interpreting the statute literally, the
`PTO uses a two-part test that departs markedly
`from the text of the statute. To determine whether
`matter in a proposed trademark is disparaging, the
`PTO considers:
`1) what is the likely meaning of the matter in
`question, taking into account not only diction-
`ary definitions, but also the relationship of the
`matter to the other elements in the mark, the
`nature of the goods or services, and the man-
`ner in which the mark is used in the market-
`place in connection with the goods or services;
`and
`2) if that meaning is found to refer to identifi-
`able persons, institutions, beliefs or national
`symbols, whether that meaning may be dis-
`paraging to a substantial composite of the ref-
`erenced group.
`Pet. App. 171a-172a. This test has been endorsed by
`the Federal Circuit. Pet. App. 126a.
`Both parts of the PTO’s test contort the word “dis-
`parage” far beyond what the statute will bear. The
`
`

`
`
`
`16
`
`
`
`first part of the test tells examiners to rely on dic-
`tionary definitions of a word used in a trademark,
`but not to consider any of the contextual considera-
`tions that make up the ordinary meaning of the word
`“disparage,” such as whether the applic

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