JOSEPH MATAL, INTERIM DIRECTOR, UNITED STATES PATENT

AND TRADEMARK OFFICE, PETITIONER v. SIMON SHIAO TAM

FACTS:

Simon Tam, lead singer of the rock group “The Slants” (‘slants’ or ‘slant-eyes’), sought federal registration of the
mark “THE SLANTS” for their band name. “Slants” is a derogatory term for persons of Asian descent, and members of the
band are Asian-Americans. He chose this moniker in order to “reclaim” the term and drain its denigrating force as a
derogatory term for Asian persons.

The Patent and Trademark Office (PTO) denied the application under a Lanham Act provision prohibiting the
registration of trademarks that may “disparage . . . or bring . . . into contempt or disrepute” any “persons, living or dead.”

Tam contested the denial of registration through the administrative appeals process, to no avail. He then took the
case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause facially
unconstitutional under the First Amendment’s Free Speech Clause.

Tam contested that the term “persons” in the disparagement clause only includes juristic and natural persons.
Because racial and ethnic groups are neither natural nor “juristic” persons, Tam asserts, these groups fall outside this
definition.

ISSUE:

Whether, under the law, the mark “The Slants” constitutes a grave violation of the disparagement clause which warrants
its rejection by the Patent and Trademark office (PTO)

RULING:

YES

In accordance with the Lanham Act, the disparagement clause prohibits the registration of trademarks “which may
disparage . . . persons, living or dead.”

In the case at bar, Tam’s argument is refuted by the plain terms of the disparagement clause. The clause applies
to marks that disparage “persons.” A mark that disparages a “substantial” percentage of the members of a racial or ethnic
group, necessarily disparages many “persons,” namely, members of that group. Tam’s argument would fail even if the
clause used the singular term “person,” but Congress’ use of the plural “persons” makes the point doubly clear. Moreover,
the clause is not limited to marks that disparage a particular natural person. By its terms, the clause applies to marks that
disparage, not just “persons,” but also “institutions” and “beliefs” which includes members of any group whose members
share particular “beliefs,” such as political, ideological, and religious groups.

OTHER ISSUE: Was the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause?

RULING: The Court held that trademarks are private, not government, speech. It explained that the registration of
trademarks that disparaged or brought into contempt or disrepute any person, living or dead, violated the Free Speech
Clause of the First Amendment because it offended a bedrock First Amendment principle that speech may not be banned
on the ground that it expresses ideas that offend. The PTO violated the free speech rights of the lead singer of the rock
group, “The Slants,” when it found that the mark could not be registered on the principal register because it was used as
a derogatory term for Asian persons.