A Review Of The Supreme Court’s Questions And Comments In ‘Slants’ Case Indicates A Split Decision
Last week, the U.S. Supreme Court heard oral argument in Tam v. Lee, a case that may determine the constitutionality of the provisions of 15 U.S.C. §1052(a) that prevent federal registration of “disparaging” trademarks. The Court could also weigh in on the constitutionality of the portions of §1052(a) that prevent registration of “immoral” or “scandalous” trademarks as well- a possibility that has the Washington Redskins closely monitoring the case.
The Trademark Office refused to register the name SLANTS for a musical group fronted by Asian-American Simon Tam, finding the mark disparaging to Asians. The case was teed-up for SCOTUS review in December 2015, when the United States Court of Appeals for the Federal Circuit held that the refusal to register disparaging marks amounted to unconstitutional viewpoint discrimination contrary to the First Amendment under a strict scrutiny review appropriate for government regulation of message or viewpoint speech. The Federal Circuit also noted that §2(a) is unconstitutional under an intermediate scrutiny analysis traditionally applied to regulation of commercial speech because the government had not demonstrated any “legitimate interest.”
In the wake of the Federal Circuit’s decision and pending SCOTUS review of the case, the Trademark Office has been suspending trademark applications that it deems immoral, scandalous or disparaging marks rather than issuing its traditional 2(a) refusals. Should the eight current Supreme Court Justices issue a 4-to-4 split decision, the Federal Circuit’s ruling that the disparagement proscriptions of §2(a) are unconstitutional would become the final decision in the case. If that happens, the Trademark Office would need to revamp its treatment of “disparaging” marks and also determine to what extent the Federal Circuit’s decision extends to the registrability of “immoral” and “scandalous” marks, since those are also §2(a) proscriptions.
Although the Justices’ questions and comments at oral argument are not always a good predictor of how they will ultimately vote, they do provide some clues. Below is a purely subjective interpretation of the Justices’ questions and comments during oral argument.
In keeping with his usual practice, Justice Thomas remained silent during oral argument. The other Justices, however, participated in the lively discussion, asking questions of litigators Malcolm L. Steward (arguing on behalf of the USPTO) and John C. Connell (arguing on behalf of Simon Tam).
By my tally, there were twelve questions/comments leaning in favor of Tam and eleven leaning in favor of the USPTO. The comments and questions by Justices Ginsburg, Sotomayor and Kagan tended to favor the USPTO’s positions and Justices Kennedy and Alito tended to favor Tam’s position. Comments from Chief Justice Roberts and Justice Breyer were evenly split. Based on the comments and questions, it appears that the Court will rule in the USPTO’s favor, and find the disparagement proscriptions of §2(a) to be a constitutional restriction of commercial speech under an intermediate scrutiny review.
As seen in Forbes.