Slanting Trademark Choices in the Right Direction

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

26 Pages Posted: 10 Nov 2016

See all articles by Zachary Kasnetz

Zachary Kasnetz

Growe Eisen Karlen Eilerts; University of Missouri School of Law

Date Written: 2015

Abstract

Simon Tam is the promoter of the Asian rock band THE SLANTS. He applied to the US Patent and Trademark Office to register THE SLANTS as a trademark, but his application was denied under Section 2(a) of the Lanham Act –– which prohibits the US Patent and Trademark Office from registering trademarks that disparage any person or group –– on the grounds that it would likely be perceived as disparaging Asians. Tam appealed arguing –– as most commentators and legal academics have for years –– that Section 2(a) violated the First Amendment. In December 2015, the en banc Federal Circuit agreed, overruling longstanding precedent when it ruled that Section 2(a) was a facially unconstitutional content and viewpoint based restriction on speech. Specifically, applying the doctrine of unconstitutional conditions, it held that Section 2(a) impermissibly conditioned the benefits of federal trademark registration on a trademarks message This note argues that the Federal Circuit erred and critiques several aspects of its reasoning, particularly its application of the unconstitutional conditions doctrine. First, the court incorrectly focused on whether Section 2(a) was content and viewpoint-based and on the type of speech it affected instead of focusing of the key question in any unconstitutional conditions case: whether a given condition is reasonably related to the government program at issue. Second, the court erred in its conclusion that Section 2(a) affected the expressive and not commercial aspects of Tam’s mark. Finally, this note argues that Section 2(a) arguably does further the goals of federal trademark law by incentivizing the selection of better trademarks.

Keywords: Trademarks, First Amendment, Unconstitutional Conditions, Federal Circuit, Free Speech

JEL Classification: K00

Suggested Citation

Kasnetz, Zachary, Slanting Trademark Choices in the Right Direction (2015). In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), Available at SSRN: https://ssrn.com/abstract=2864016

Zachary Kasnetz (Contact Author)

Growe Eisen Karlen Eilerts ( email )

7733 Forsyth Blvd., Suite 325
Clayton, MO 63105
United States

University of Missouri School of Law ( email )

Missouri Avenue & Conley Avenue
Columbia, MO MO 65211
United States

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