In Re Simon Shiao Tam
785 F.3d 567
Fed. Cir.2015Background
- Simon Shiao Tam, frontman of the band The Slants, applied to register THE SLANTS as a service mark for live musical performances; initial application (’263) abandoned, second application (’044) followed.
- Examining attorney refused registration under 15 U.S.C. § 1052(a) as disparaging to people of Asian descent; applicant appealed to the Trademark Trial and Appeal Board (TTAB).
- TTAB affirmed, finding THE SLANTS likely refers to Asians and that definitions, band materials, and community responses showed the term is disparaging to a substantial composite of that group.
- On appeal to the Federal Circuit, the court reviewed factual findings for substantial evidence and the legal conclusion de novo, and affirmed the TTAB’s refusal to register.
- Tam raised constitutional challenges (First Amendment, vagueness, due process, equal protection); the Federal Circuit rejected them relying on precedent but Judge Moore issued separate views urging reconsideration of § 2(a)’s constitutionality.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Disparagement under §2(a): whether THE SLANTS refers to Asians and is disparaging to a substantial composite | Tam: term has innocuous meanings; current specimens lack Asian imagery; other "slant" registrations exist | PTO/Board: dictionaries, applicant statements, band imagery, and community objections show likely meaning refers to Asians and is disparaging | Affirmed: substantial evidence supports that THE SLANTS refers to Asians and is disparaging to a substantial composite, so registration properly refused |
| Use of evidence from prior (abandoned) application | Tam: evidence gathered during the earlier application is irrelevant/improper | PTO: prior-file evidence is relevant to manner-of-use and admissible in ex parte proceedings | Held: PTO properly considered prior evidence; use was permissible and relevant to marketplace use period claimed by applicant |
| First Amendment challenge to §2(a) (facial and as-applied) | Tam: refusing registration conditions a government benefit on speech and chills protected expression | PTO: refusal to register does not prohibit use; registration is a government benefit and precedent (McGinley) holds §2(a) does not abridge First Amendment | Held: Court follows precedent—refusal to register does not violate First Amendment; applicant may still use the mark (but Judge Moore urged revisiting this precedent) |
| Other constitutional challenges (vagueness, due process, equal protection) | Tam: terms like "disparaging" are vague/subjective; PTO applied §2(a) arbitrarily; considering applicant's ethnicity violates equal protection | PTO: Board applies established two-part test; applicant had full process and appeals; denial based on use, not applicant's race | Held: §2(a) not unconstitutionally vague; no due process violation (applicant had process); no equal protection violation because denial rests on nondiscriminatory grounds |
Key Cases Cited
- In re Geller, 751 F.3d 1355 (Fed. Cir. 2014) (two-part disparagement test and standard of review)
- In re McGinley, 660 F.2d 481 (C.C.P.A. 1981) (holding refusal to register does not abridge First Amendment rights)
- Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980) (commercial-speech intermediate-scrutiny framework)
- Perry v. Sindermann, 408 U.S. 593 (1972) (unconstitutional-conditions doctrine)
- R.A.V. v. City of St. Paul, 505 U.S. 377 (1992) (viewpoint discrimination doctrine)
- Sorrell v. IMS Health Inc., 564 U.S. 552 (2011) (heightened review for viewpoint-based or content-based commercial regulation)