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94 Denver L. Rev. F. 1 (2016-2017)

handle is hein.journals/dnvrlwfv94 and id is 1 raw text is: INRE TAM: TREATING TRADEMARKS AS EXPRESSIVE SPEECH Simon Shiao Tam first sought to register the name of his band, The Slants, as a trademark in 2011.1 At the time, Mr. Tam was seeking to use his band's name to reclaim negative Asian stereotypes.2 However, the trademark examiner found that even though Mr. Tam was seeking to reappropriate the term, a substantial composite of people of Asian de- scent would find the stereotype offensive.3 So, the examiner refused to register the mark under the disparagement provision of section 2(a) of the Lanham Act.4 Mr. Tam appealed the examiner's decision to the Trademark Trial and Appeal Board (TTAB), which upheld the examin- er's refusal to register the mark.: Mr. Tam again appealed to the Federal Circuit, which initially upheld the examiner's decision and held that precedent foreclosed Tam's argument that section 2(a) is unconstitution- al.6 After that decision, the Federal Circuit sua sponte ordered a rehearing en banc on the question of the constitutionality of section 2(a).7 The disparagement provision of section 2(a) specifies that a trade- mark may not be registered on the principal register if it consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols, or bring them into con- tempt or disrepute.8 Until Tam, the Federal Circuit relied on In re McGinley to assert the constitutionality of section 2(a).9 The court in McGinley held that because a refusal to register a trademark does not mean that the trademark cannot be used, section 2(a) does not violate the First Amendment.10 Courts and the TTAB, supported by the decision in McGinley upholding the section's constitutionality, have rejected a varie- ty of trademarks under section 2(a)'s disparagement provision, including: Redskins; Stop the Islamisation of America; The Christian Prosti- tute; and Mormon Whiskey. The majority in this case held that it would be unconstitutional for the government to refuse to register trademarks under the disparagement 1. In re Tam, 2015 U.S.App. LEXIS 22593, *14 (Fed. Cir. 2015). 2. Id. at *13 3. Id. at *14 4. Id. 5. Id. 6. Id. at *16 - *18. 7. Id. at *21. 8. 15 U.S.C.A. §1052(a) (West 2006). 9. Tam, 2015 U.S.App. LEXIS 22593 at *18. 10. In re McGinley, 660 F.2d 481,484 (Fed. Cir. 1981). 11. Tam, 2015 U.S.App. LEXIS 22593 at *10. 1

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