582 U.S. 218 (2017)
Simon Tam serves as the lead singer of the rock group The Slants, whose members are Asian-Americans.1 He chose the name in an effort to reclaim the term and drain its denigrating force as a derogatory reference to Asian persons.2 The group has incorporated childhood slurs into its lyrics and titled albums including The Yellow Album and Slanted Eyes, Slanted Hearts.3 Tam filed an application with the Patent and Trademark Office seeking registration of THE SLANTS as a trademark.4
The PTO examining attorney rejected the application after applying a two-part analysis and concluding that a substantial composite of persons of Asian descent would find the mark offensive.5 The attorney cited dictionary definitions labeling the term as derogatory and evidence that the band's name had prompted cancellation of a performance along with negative comments from online readers.6 Tam appealed the denial first to the examining attorney and then to the Trademark Trial and Appeal Board, which upheld the refusal.7
Tam then brought the case before the Federal Circuit.8 Sitting en banc, that court reversed the Board.9 The Government petitioned for certiorari, and the Supreme Court granted review.10
Whether the Lanham Act's disparagement clause applies to trademarks that disparage members of a racial or ethnic group?11
Yes. The clause reaches marks disparaging racial groups. Simon Tam sought registration of THE SLANTS. The PTO examining attorney determined that the term is offensive to a substantial composite of Asian persons based on dictionary definitions and evidence of offense taken by the band's name.14
The disparagement clause applies to trademarks that disparage members of a racial or ethnic group.15
Whether trademarks constitute government speech rather than private speech?16
No. Simon Tam created the mark THE SLANTS for his band The Slants to reclaim a derogatory term. The PTO does not create, edit, or originate the expressive content of any trademark submitted for registration. An examiner may reject an application only under the specific statutory exceptions such as the disparagement clause and may not otherwise base rejection on the viewpoint expressed. Here the examining attorney rejected the application solely because the mark was found disparaging under that clause, confirming that the speech originated with the private applicant rather than the government.19
Trademarks constitute private speech rather than government speech.20
Whether the disparagement clause violates the First Amendment's Free Speech Clause?21
The disparagement clause constitutes viewpoint discrimination. It prohibits registration of marks that are disparaging but allows positive or neutral marks. Such discrimination violates the Free Speech Clause because speech may not be banned on the ground that it expresses ideas that offend.22
Yes. The PTO denied registration of THE SLANTS because it may disparage persons of Asian descent. This reflects the Government's disapproval of a subset of messages it finds offensive. Viewpoint discrimination of this kind is the essence of the constitutional violation and cannot survive scrutiny even under commercial speech standards.23
The disparagement clause violates the First Amendment's Free Speech Clause.24
Related opinions on this issue
Joined by Ginsburg, Sotomayor, And Kagan, Jj.
Justice Kennedy explained that the disparagement clause is viewpoint discrimination in its purest form. Within the category of persons, institutions, beliefs, or national symbols, an applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government's disapproval of a subset of messages it finds offensive.
This is the essence of viewpoint discrimination. The Government's arguments in defense of the statute are unpersuasive. Regardless of whether trademarks are commercial speech, the viewpoint-based discrimination here necessarily invokes heightened scrutiny.
To permit viewpoint discrimination in this context is to permit Government censorship.25
Justice Thomas agreed that the disparagement clause violates the First Amendment. He wrote separately to note that the clause is also unconstitutionally vague. The PTO's application of the clause has been inconsistent and unpredictable.
The clause provides no clear standard for determining when a mark is disparaging. This vagueness chills protected speech. Justice Thomas also agreed that trademarks are private speech.
The Government's registration of a trademark does not transform it into government speech. The Government cannot use its registration power to suppress disfavored viewpoints.26