Amicus Curiae Brief — Lee v. Tam, 137 S. Ct. 30 (2016) (No. 15-1293)

Supreme Court brief2016

Ask Donna

What actually matters in this document.

Text

No. 15-1293

IN THE

Supreme Court of the Anited States

MICHELLE K. LEE, UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY AND

DIRECTOR, UNITED STATES PATENT AND

TRADEMARK OFFICE,

Petitioner,

SIMON SHIAO TAM,

Respondent,

ON WRIT OF CERTIORARI

To THE UNITED STATES COURT OF APPEALS

For THE FEDERAL CIRCUIT

BRIEF FOR AMANDA BLACKHORSE, MARCUS

BRIGGS-CLOUD, PHILLIP GOVER, JILLIAN

PAPPAN AND COURTNEY TSOTIGH AS AMICI

CURIAE IN SUPPORT OF PETITIONER

ADAM G. YOFFIE JESSE A. WITTEN

DRINKER BIDDLE & REATH LLP Counsel of Record

105 College Road East TORE T. DEBELLA

Princeton, NJ 08542 PATRICK H. THOMPSON

(609) 716-6500 DRINKER BIDDLE & REATH LLP

1500 K Street NW

Washington, DC 20005

(202) 842-8800

Jesse.Witten@dbr.com

Counsel for Amici Curiae

QUESTIONS PRESENTED

Section 2(a) of the Lanham Act provides that a

mark is not eligible for federal registration if it

“Iclonsists of or comprises . . . matter which may

disparage . . . persons, living or dead .. . or bring

them into contempt, or disrepute.” 15 U.S.C. §

1052(a).

1. Does the disparagement provision of Section

2(a) violate the First Amendment?

2. Is the disparagement provision void for

vagueness under the Due Process Clause?

3. Should the disparagement provision be

interpreted according to its plain language?’

—_— —$

* The Government's Petition for a Writ of Certiorari presented

the first question. Respondent Simon Tam’s Opposition raised

the latter two questions.

TABLE OF CONTENTS

QUESTIONS PRESENTED.................. sapuieeadiaceenmala i

TABLE OF AUTHORITIES ..............ccccccccccocccccceeeeees Vv

INTEREST OF THE AMICT ..00000.00.0cccccccccccees. soadeut 1

INTRODUCTION ........0.ccscsscccesseres sesthides vegiieiedetetbos 2

A. Trademark And Service Mark

Registration Process. ....................0.0.... 2

B. The Owner Of An Unregistrable

Mark Has Statutory And

Common Law Enforcement

ata a ae Ns osenontiiababescnice sass eae

SUMMARY OF ARGUMENT................................... 6

Sc, Se EIS ESSENSE Seo mal

L. THE DISPARAGEMENT PROVISION

DOES NOT VIOLATE THE FIRST

Pa a ie ete ae aE 9

A. Tam’s First Amendment Rights

WOOO BOOS FINO Goo ccccccscccccscovssoecseesees 4

3 Refusal To Register A

Mark May Affect The

Owner's Ability To Enjoin

Others From Speaking,

But The Right To Silence

Others Is Not A First

Amendment Right..................... 4

il}

2. Many Federal Trademark

And Similar Laws

Discriminate On The Basis

Of Content And Would

Fall If The Disparagement

Provision ls Held

Unconstitutional .....................

3. Unregistrable Marks Are

Enforceable. Their Owners

Are Fully Capable Of

Silencing Others......................

B. Refusing To Register A Mark Is

An Example Of Government

SRE te Nalco. Se FUE Si Cs SIAR se

l. A USPTO Registration

Certificate And The

Principal Register Are

Government Documents .........

2. Trademark Registrations

Are Government Specch .........

THE DISPARAGEMENT PROVISION

IS NOT VOID FOR VAGUENESS ..............

A. The Standard Of Review Is

Lenient Because Section 2(a) Of

The Lanham Act Does Not Make

Any Conduct Unlawful ......................

B. The Term “May Disparage” Is

Not Unconstitutionally Vague ..........

1. The Disparagement

Provision Gives Fair

_ het ENSTS Eee ear 28

2. The Disparagement

Provision Does Not

Authorize Arbitrary And

Discriminatory

i a ccedanens 31

Ill. SECTION 2(A) SHOULD BE

INTERPRETED ACCORDING TO ITS

EE SITE sicccinsssmcsessastessornisconcousesies 35

A. The Inclusion Of “May” In “May

Disparage” Means That Proof Of

Actual Disparagement Is Not

Required For A Mark To Be

ER A a TRS EP 35

B. Intent To Disparage Is Not

SITE cclchuinibibednsiesin ced ikdeamusinaeeianas 37

C. Evidence Of A “Substantial

Composite” Is One Way To

Demonstrate That A Mark

Contains Matter That “May

Disparage,” But ls Not The Only

Sasi ccniedatceahstaetiialaahianninie iste Se yt 38

I li ach cisicninnivnn-cinrdiplesscmnenijerieneaiegeniclioel 4)

, _ .

Page(s)

CASES

Accuride Int'l, Inc. v. Accuride Corp.,

rp es pp of he Rl Ree eeeeenenane 5

Am. Legion v. Matthew,

eg e F ff Rl ener 17

Anheuser-Busch, Inc. v. Balducci Pub!'ns,

RF a |. 10

B&B Hardware, Inc. v. Hargis Indus.,

Re is EE IEE deco dceusencbonnecesevesessepoven 2,19

Brother Records, Inc. v. Jardine,

318 F.3d 900 (Oth Cir. 2OOS)..........cccccceerssceress es

City of Chicago v. Morales,

ee A I ccscascsnsccces’ NRE SETS 27, 28

In re City of Houston,

ee I, CAE, SE wicesinvscnscvecsestessscescsee 4

Doe v. Chao,

ES Ea ee ERS O RE 36

F.7.C. v. Wyndham Worldwide Corp.,

798 F.3d 236 Ge Cir. BOL5) .........00cscccocecccseees 26, 27

FCC v. Fox TV Stations, Inc.,

i oi caelpebnnaepaapetuastiasins 27

Flowers v. State,

220 S.W.3d 919 (Tex. Crim. App. 2007).............. 39

FTC v. Morton Salt Co.,

atk Sd) | ee PRONE TE

In re Geller,

751 F.3d 1355 (Fed. Cir. 2014)................ss00. 38, 39

George Nelson Found. v. Modernica,

12 F. Supp. 3d 635 (S.D.N.Y. 2014) ..............cceeeeee 9

Golan v. Holder,

193 B. Cé. B73 CBOLD)..05.:.00000 000000 ndlecicsdbivedenneles 14

Grayned v. City of Rockford,

I Il otennwiitn 26, 27

Herbko Int'l, Inc. v. Kappa Books, Inc.,

308 F.3d 1156 (Fed. Cir. 2002).................0..:0006 4,5

Hershey’s Co. v. Art Van Furniture, Inc.,

2008 WL 4724756 (E.D. Mich. Oct.

cen ee eo a os cakcosamepbineeie 10

Hill v. Colorado,

A os dns casepnopnnesessucosonsenss 28

Hoffman Estates v. The Flipside,

Hoffman Estates, Inc.,

I oo onc ccaciadesibansseseseenseys 26, 27, 34

Holder v. Humanitarian Law Project,

a ccusibasébeboovinnéusbambsase 34

Johanns v. Livestock Mktg. Assn.,

eT ny vecesuccssuasesevssestendeniess 19

Johnson v. United States,

a sacs saneneseveseeboeie 34

The Last Best Beef, LLC v. Dudas,

506 F.3d 333 (4th Cir. 2007)................0.cccccceeeeee es 16

Leidersdorf v. Flint,

BT IE, BEINN cane codacscnscceveecsssonveevecsveccesses 5

Marsh v. Chambers,

Se Ne in. ssc iseccsddcasioteneteesneabe 8, 29

In re Mavety Media Grp., Ltd.,

33 F.3d 1967 Che. Cir. 1904).......ccc..cccscccsccersveese 40

McCann v. Anthony,

I I sn aco cdseesibbudenvived ivesasecdsenees 5

In re McGinley,

4 & EF of tok * | | | 40

Mitchell Bros. Film Grp. v. Cinema Adult Theater,

ge | go ., ee 15

vil

Natl Endowment for the Arts v. Finley,

ES CRT ee ee svcccneaccreverdcccntaciicde: 6, 13, 27, 30

Negusie v. Holder,

ee eile ee ee icerctartneresesee 38

New Kids on the Block v. News Am. Publ’g, Inc.,

071 F.2G SOB (Sti Cir. 100B).......0ccccccsecccccesovessoces 11

Park 'N Fly v. Dollar Park & Fly, Inc.,

SE Gy Be drcnicdtncckbinsccsrabiccetassixicae 24

Pleasant Grove City v. Summum,

ft RE | Ree melee 6, 13, 19

Pro-Football, Inc. v. Blackhorse,

112 F. Supp. 3d 439 (E.D. Va. 2015)......... 1, 34, 37

Radiance Found., Inc. v. NAACP,

25 F. Supp. 3d 865 (E.D. Va. 2014)..................... 11

Reed Elsevier, Inc. v. Muchnik,

ee Sree Be i estacersed ciedionshinewieineeanaan 18, 19

Ridley v. Massachusetts Bay Transp. Auth.,

SOO FOG SB Chae Cie, BOD vin escciecncsvccecesescevscecsens 30

Rubin v. City of Lancaster,

710 F.3d 1087 (9th Cir. 2013).............. ov cdatealahics 29

San Francisco Arts & Athletics, Inc. v.

United States Olympic Comm.,

gtk eT. , RR cE 10, 11, 16, 17

Simpson v. Chesterfield Cty. Bd. of Supervisors,

404 F.3d 276 (4th Cir. 2008)...................0c0000 29, 30

Starbucks Corp. v. Wolfe’s Borough

Coffee, Inc.,

Tee Ee FED Ge Gt BID wisink ss cccseunkacesctbaane ll

Sugar Busters LLC v. Brennan,

277 F.OG SES8 (Stes Cir, 1GDD)..0..0ccseccercscscescesssssseasees 5

In re Tam,

706 FBG G67 (Ped. Cir. BOUG) i cccccevevseesenvnuctcnsaseni 39

In re Tam,

808 F.3d 1321 (Fed. Cir. 2015) (en bane).... passim

vill

Town of Greece v. Galloway,

Ee en ad 29

Two Pesos, Inc. v. Taco Cabana, Inc..,

United States v. Arias-Espinosa,

704 F.3d 616 (9th Cir. 2012)...........00..000.0.0..........36

United States v. Lexington Mill &

Elevator Co.,

BE Is BP CRG cccccccccccsvcccvccocsccevss: ee

United States v. Mead,

i ccspeoemmeneopenscectiitil

United States v. Wiiliams,

ne nt . ecocavscduvnsvencucoadeocse 26

Wag More Dogs, LLC v. Cozart,

680 F.3d 359 (4th Cir. 2012)......................cccccceee. 28

Walker v. Texas Div., Sons of

Confederate Veterans, Inc.,

8 | eee. passim

Ward v. Rock Against Racism,

491 U.S. 781 (1989)............ inled leat aaaiaieiliddicseasibbaed 28

Welch v. United States,

Wrenn v. Boy Scouts of Am.,

2008 WL 4792683 (N.D. Cal. Oct. 28,

Teen ee oo Jad sepadeneeneucduovenes 17

DOCKETED CASES

Pro-Football, Inc. v. Blackhorse, appeal

docketed, No. 15-1874 (4th Cir. Aug.

RESTS a ae So ae ee a os

TRADEMARK TRIAL AND APPEAL BOARD DECISIONS

Blackhorse v. Pro-Football, Inc.,

111 U.S.P.Q.2d 1080 (T.T.A.B. 2014).......... passim

Harjo v. Pro-Football, Inc.,

50 U.S.P.Q.2d 1705 (T.T.A.B. 1999).............. 28, 40

In re Heeb Media, LLC,

89 U.S.P.Q.2d 1071 (T.T.A.B. 2008)........-.0..cc00-. 39

In re Lebanese Arak Corp.,

94 U.S.P.Q.2d 1215 (T.T.A.B. 2010).......cccc00c00000035

In re Squaw Valley Dev. Corp.,

80 U.S.P.Q.2d 1264 (T.T.A.B. 2006)....................33

In re Tam,

108 U.S.P.Q.2d 1305 (T.T.A.B. 2013)..................38

CONSTITUTIONAL PROVISIONS

af Be Se OY Sa ee ae oe 15

Se I, II, Bh titi ae rcceccacsceeaendeteiaicanen passim

LEGISLATIVE MATERIAL

§§ GS. & | EERRPRESSRRSR Scie snrseeoemearoe 36

Hearings on H.R. 82 Before the House

Comm. on Patents, 78th Cong., Ist

RE ETE | SEE ACRE a ene

Hearings on H.R. 82 Before the

Subcomm. of the Senate Comm. on

Patents, 78th Cong., 2d Sess. (1944)...................36

Hearings on H.R. 102, H.R. 5461, S.

895, Before the Subcomm. on

Trademarks of the House Comm. on

Patents, 77th Cong., Ist Sess. (1941).................. 36

Hearings on H.R. 4744 Before the

Subcomm. on Trademarks of the

House Comm. on Patents, 76th

ice: MI, I abaddieniadadal 36

STATUTES, RULES & REGULATIONS

na 2,3

eI eT BOS Siete Sees ce ss passim

ee i iii iisiincehtn dienacans iced bataiiabaniphtidieadamaal ail 3

REI 2s ote nd fe ae 3

IRATE PREC RES EY SUES 20

ai dbedibiaaennel —

ES RATER By Sees ae SAE 3

I a 3

4 ISIN IE TERR aet a 88 31

CLF fog fe ccsiaibattanaes icwaeaae 3, 4, 33

em Mo Xo 1

8 NE aE See BARN SD: 4, 7,18

II oa cnincininidiiglsceabanicienmainasiazereiestdaismaedl 2

To) ek ee nee SEE 18

a ee 17

ESTER a ea NR RRR er ai IE 17

36 U.S.C. § 21706................... ee J a ee 17

RRA SEE PR Lata 17

RR a ETNA A RP REE ce TF 17

Set oi sins ciesteanniins ES Ra EON ena: 17

RRR I eee re RR eee 17

4 tI SRE RE ISRO SEPSSe Euan re 17

Ss rac ictccdhcidaenucepninstsiessscamunniesapepeentens 17

ON EEL LLIN: 17

ERENT EN gsm minaey Or Ma = 17

os css eeecnstiigiiepcaminionmeanaeiln 16

eS” aaa: 16, 17

tat aecet lesliateddaemmemaednoh 17

las 17

a 17

I a deuestibanebanmdscdiedddotenan 17

£8 ene DS ene each WCU ee erro esto A 16

os damemnanepieeintindiell 17

a ceitlaaiiea 17

A ceeteneetincabeiiie 18

no sennsuiiiniatielanndincand 18

36 U.S.C. § 152907...... RE OIE ED CER TTR 2 18

SEES STS ae SLE NT OPENS ae 18

ERR oa Se eS ee RE ERC DaO OTS * 18

Se ssiisead ane abecaasdoemaie anal 18

sc tetipehainishenntleaeutioonsoeiba 18

| EEE nie Fe Oran E a | 18

iliac neta 18

I on cswcccsnhstsensbeponaaoes ee 18

ERE I Snore rape EP. F 18

| EEC Ses Te Se Reba aie uSe EL... 18

Rg EE RET LESSER eS PL ore 18

I a iiaeiaeaiiens 18

SR eR ae OLN MPRA O e air 3

gE EERE RS ee er aeRO On Sere a 3

yg 8 RR pS RS 2 RES ee enw Ae” 32

Be iis incddiesinsiniincontbiencnamciauieeseiicies 32

I la a 3

I ae 39

OTHER AUTHORITIES

41 U.S. Op. Atty. Gen. 395 (U.S.A.G.

a I rE eA Reg Bite SESE SOR AOS 15

xll

Amicus Brief for Blackhorse, et. al., Jn

re Tam, No. 14-1203 (Fed. Cir. July

33, BO1B), BOP Ne. 14B......c.cccccccccccess.

Esha Bandari, ‘You're Not Wrong,

You re Just an A**hole,’ ACLU Blog

of Rights (Mar. 6, 2015, 12:30 PM),

https://www.aclu.org/blog/free-

speech/youre-not-wrong-youre-just-

SN calc cicesnaicodhseeteicehuiedibddinidahiabinmmteiudoulices

New “Standard” Dictionary of the

English Language, Funk and

Wagnalls Company (1947).................

Memorandum in Support of Motion for

Summary Judgment on

Constitutional Claims, Pro-Football,

Inc. v. Blackhorse, No. 14-cv-01043

(E.D. Va. Feb. 23, 2015), ECF No. 56

Kimberly A. Pace, The Washington

Redskins Case and The Doctrine of

Disparagement: How Politically

Correct Must a Trademark Be?, 22

Pepp. L. Rev. 7, 33 (1994)..................

USPTO, Trademark Manual of

Examining Procedure (Oct. 2016) .....

Eugene Volokh, Freedom of Speech and

Intellectual Property: Some

Thoughts After Eldred, 44

Liquormart, and Bartnicki, 40 Hous.

Bi, Ses GI II on cescccaccinintechenkSummiease

Webster’s New International Dictionary,

G. & C. Merriam Company (2nd ed.

INTEREST OF THE AMICI

Amict curiae Amanda Blackhorse, Marcus

Briggs-Cloud, Phillip Gover, Jillian Pappan, and

Courtney Tsotigh are Native American individuals

who successfully petitioned the Trademark Trial and

Appeal Board (“TTAB”) to cancel six service mark

registrations of the Washington NFL football team.

The TTAB found that the team’s marks were

ineligible for registration under Section 2(a) of the

Lanham Act, 15 U.S.C. § 1052(a), and thus subject to

cancellation, because they contain matter that may

disparage Native Americans (i.e., the term “redskin”

or a derivation of “redskin”). Blackhorse v. Pro-

Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014).

The team’s owner, Pro Football, Inc. (“PFI”),

brought an action in the Eastern District of Virginia,

under 15 U.S.C. § 1071(b), to overturn the TTAB’s

decision. The District Court granted summary

judgment in favor of Blackhorse and the other amici,

agreeing with the TTAB that PFI’s marks were

ineligible for registration. Pro-Football, Inc. v.

Blackhorse, 112 F. Supp. 3d 439, 467 (E.D. Va.

2015). The Court also rejected PFI’s Constitutional

arguments. See id. at 454-464.

PFI appealed and its appeal is pending. Pro-

‘ootball, Inc. v. Blackhorse, appeal docketed, No. 15-

| Petitioner's letter consenting to the filing of this brief, and

Respondent's letter consenting to the filing of amicus briefs, are

on file with the Clerk’s office. No party or counsel for a party

has authored this brief in whole or in part, and no person or

entity other than amici and their counsel has made a financial

contribution to its preparation or submission.

1874 (4th Cir. Aug. 6, 2015). PFI petitioned this

Court for a writ of certiorari before judgment, which

was denied.

Amici have an interest in ensuring that the

United States Patent and Trademark Office

(“USPTO”) properly implements Section 2(a) so that

they can avoid further insult resulting from the

registration of marks that disparage them and other

Native Americans.

INTRODUCTION

A. Trademark And Service Mark

Registration Process.

A “trademark” is a word, name, symbol or

combination thereof, used in commerce to identify

and distinguish the goods of one entity from those of

others, while a “service mark” is used to distinguish

services. 15 U.S.C. § 1127. The term “mark” is a

general term that covers trademarks and service

marks. Jd. The mark at issue in this case is a

service mark.

Rights in a mark arise from use of the mark in

commerce, not due to any Government action. B&B

Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293,

1300 (2015). The Government does not grant or

issue marks.

The Lanham Act, 15 U.S.C. §§ 1051 et seq.,

creates a mechanism for a mark owner to seek a

registration from the USPTO. This case does not

concern the refusal of the USPTO to issue a mark

(which the Government does not issue) but rather its

refusal to issue a mark registration.

USPTO Examining Attorneys review

applications to determine whether the mark meets

statutory and_ regulatory requirements for

registration. 15 U.S.C. § 1051; 37 C.F.R. § 2.61.

Section 2 of the Lanham Act provides that a mark is

ineligible for registration if, among many other

criteria, it contains or comprises matter that “may

disparage” persons, institutions, beliefs or national

symbols.” 15 U.S.C. § 1052; see also 15 U.S.C. § 1053

(applying § 1052 to service marks).

If the Examining Attorney believes that the

application satisfies the registration criteria, the

USPTO publishes the application in the Official

Gazette, a weekly USPTO periodical. 15 U.S.C. §

1062; 37 C.F.R. §§ 2.61 & 2.80. One who learns of

the application from the Official Gazette may object

by filing an opposition proceeding with the TTAB

within 30 days of publication. 15 U.S.C. § 1063. The

TTAB will then determine whether the USPTO

should issue a registration despite the opposition. If

there is no objection, and if the application satisfies

the statutory and regulatory criteria, the USPTO

will issue a registration certificate to the applicant

and will list the mark on the Principal Register, the

official record of all marks registered by the United

States. 15 U.S.C. § 1057; 37 C.F.R. § 2.151.

On the other hand, if — as occurred with

Respondent Simon Tam’'s application — an

Examining Attorney refuses’ registration, the

applicant may appeal the refusal to the TTAB. 15

U.S.C. § 1070. The TTAB will then decide whether

the mark is entitled to registration.

B. The Owner Of An Unregistrable Mark

Has Statutory And Common Law

Enforcement Rights.

Unregistered marks — including unregistrable

marks — are fully enforceable. The owner of an

unregistrable mark can bring infringement claims

for an injunction or damages under both Section

43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and

the common law.

The plain language of Section 43(a) permits

enforcement against any person who “uses in

commerce any word, term, name, symbol, device, or

any combination thereof” that is likely to cause

confusion or mistake regarding the source of that

person’s goods or services. 15 U.S.C. § 1125(a)(1)(A).

There is nothing in Section 43(a) that limits these

claims to registered or registrable marks.

Accordingly, courts have held that

unregistrable marks are enforceable under Section

43(a). See In re City of Houston, 731 F.3d 1326, 1331

(Fed. Cir. 2013) (stating that a trademark ineligible

for registration under Section 2(b) of the Lanham

Act may be enforced under Section 43(a)), cert.

denied, 134 S. Ct. 13825 (2014). In fact, courts have

held that Section 43(a) provides for enforcement of

titles of single literary works and trade names,

neither of which is eligible for registration under the

Lanham Act. See Herbko Int'l, Inc. v. Kappa Books,

Inc., 308 F.3d 1156, 1163 n.2 (Fed. Cir. 2002) (single

book titles); Sugar Busters LLC v. Brennan, 177 F.3d

258, 269 (5th Cir. 1999) (same); Accuride Int'l, Inc. v.

Accuride Corp., 871 F.2d 1531, 1534 (9th Cir. 1989)

(trade names).

The Federal Circuit’s suggestion that

unregistrable marks cannot be enforced under

Section 43(a) is not well-founded. See Jn re Tam, 808

F.3d 1321, 1344 n.11 (Fed. Cir. 2015). It took out of

context a statement by this Court that Section 43(a)

protects “qualifying unregistered trademarks” and

that “the general principles qualifying a mark for

registration under § 2 of the Lanham Act are for the

most part applicable in determining whether an

unregistered mark is entitled to protection under §

43(a).” Jd. (quoting Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 768 (1992)). In Two

Pesos, this Court was merely stating that a mark

eligible for registration will tend to have the source-

identifying properties and hence be eligible for

enforcement under Section 43(a). Two Pesos did not

imply that unregistrable marks necessarily lack the

source-identifying properties needed for Section 43

enforcement.

The Federal Circuit also doubted that Tam’s

mark was enforceable under common law. See In re

Tam, 808 F.3d at 1344. ‘There are, however,

examples of enforcement under common law of

trademarks comprising cthnic slurs. See, e.g.,

Leidersdorf v. Flint, 7 N.W. 252 (Wis. 1880) (“Nigger-

Hair Smoking Tobacco”); McCann v. Anthony, 21 Mo.

App. 83, 91-92 (1886) (“Old Coon Smoking Tobacco”).

SUMMARY OF ARGUMENT

1. The Federal Circuit erred in holding that

the Lanham Act prohibition against registering

marks that “may disparage” violates the First

Amendment. See /n re Tam, 808 F.3d at 1328. The

refusal to register a mark does not implicate the

First Amendment rights of the mark owner.

Trademark law grants a speech monopoly to

mark owners, enabling the owner to silence others

from using similar words or symbols. The USPTO’s

refusal to register Tam’s mark may marginally

reduce his ability to silence others, but that does not

implicate ~ let alone violate — his right to Free

Speech. There is no First Amendment right to

curtail the speech of others.

There is no merit to Tam’s argument that the

disparagement provision violates the First

Amendment because it involves viewpoint

discrimination. If the Constitution prohibits

viewpoint discrimination in the context of a mark

registration, it is not the First Amendment that does

so. Depending on the facts and circumstances

presented, other Constitutional provisions, such as

the Equal Protection, Due Process or Establishment

Clause, might prevent the Government from

discriminating based on content when it issues mark

registrations. See Natl Endowment for the Arts v.

Finley, 524 U.S. 569, 598 n.3 (1998) (Scalia, J.,

concurring); Pleasant Grove City v. Summum, 555

U.S. 460, 481-82 (2009) (Stevens, J., concurring).

The right to silence others, however, is not a right

that arises under the First Amendment. Therefore,

marginally reducing that right on alleged viewpoint-

discriminatory grounds does not violate the First

Amendment.

Even if this Court were to entertain the notion

that First Amendment rights are implicated by a law

that reduces a speech-monopolist’s ability to silence

others, the refusal to register a mark is not

significant enough to burden the mark owner's Free

Speech rights. Denial of a registration does not

render a mark unenforceable. Unregistrable marks

can be enforced under Section 43(a) of the Lanham

Act, 15 U.S.C. § 1125(a), and under the common law.

The Federal Circuit erred in concluding otherwise,

causing it to overstate significantly the impact of a

registration denial.

2. Alternatively, due to the Government

speech doctrine, the refusal to register Tam’s mark

did not violate his First Amendment rights. See

Walker v. Texas Div., Sons of Confederate Veterans,

Inc., 1385 S. Ct. 2239, 2246 (2015). Although a

private party’s use of a mark is not Government

speech, the issuance of a registration and the

publication on the USPTO’s Principal Register are

Government — speech. Reprinted below’ are

Government registrations of blatantly racist

trademarks registered before Congress amended the

Lanham Act to preclude registration of marks that

“may disparage.” Infra at 21-22. The First

Amendment does not compel the Government to

issue registration certificates for such marks or

publish those marks on its Principal Register.

Congress made a valid decision that the Government

should not associate itself with such marks.

3. The disparagement provision of Section

2(a) is not void for vagueness under the Due Process

Clause. Section 2(a) imposes no criminal or civil

penalties and proscribes no conduct. As a result, it

is reviewed deferentially for vagueness.

The term “may disparage” contains commonly

understood words, and this Court even employed

“disparage” to articulate the test for permissible

legislative prayer under the Establishment Clause.

Marsh v. Chambers, 463 U.S. 783 (1983). Section

2(a) also does not encourage and authorize arbitrary

and discriminatory enforcement. The Lanham Act

and USPTO regulations create a transparent and

fair process for evaluating registration applications.

4. The disparagement provision of Section

2(a) should be interpreted according to its plain

language. Both the plain language of the Lanham

Act and its legislative history demonstrate that a

mark is not eligible for registration if it “may

disparage.” Proof of actual disparagement is not

required. Likewise, under the plain language of

Section 2(a), proof that the mark owncr intended to

disparage is not required for the mark to be

ineligible for registration.

When the TTAB applies the disparagement

provision of Section 2(a), it looks for evidence that a

“substantial composite” of the referenced group

(here, people of Asian descent) find that a mark is

disparaging. While evidence of the views of a

“substantial composite” is one way of demonstrating

that a mark “may disparage,” it is not the only way.

This Court should not imply that the TTAB’s

“substantial composite” test is the only way to

demonstrate that a mark “may disparage.”

ARGUMENT

I. THE DISPARAGEMENT PROVISION

DOES NOT VIOLATE THE’ FIRST

AMENDMENT.

A. Tam’s First Amendment Rights Were Not

Affected.

1. Refusal To Register A Mark May

Affect The Owner’s Ability To Enjoin

Others From Speaking, But The Right

To Silence Others Is Not A First

Amendment Right.

a. The Federal Circuit erred in treating

the refusal to issue a service mark registration as

burdening Tam’s First Amendment rights. Jn re

Tam, 808 F.3d at 1345.

The Federal Circuit's position turns

trademark law on its head. Trademark law is not a

device to protect the First Amendment rights of the

mark owner, but to decrease the speech rights of

everyone else. Trademark law grants a mark owner

a speech monopoly. See George Nelson Found. v.

Modernica, 12 F. Supp. 3d 635, 644-45 (S.D.N-Y.

2014) (“The user who first appropriates the mark

obtains [an] enforceable right to exclude others .. .

.”’) (citation omitted). The law empowers the owner

to enjoin others from using similar words and

symbols.

When the USPTO refuses to issue (or cancels)

a registration, that action might marginally affect

the owner’s ability to enjoin others from speaking,

but there is no First Amendment right to prevent

others from speaking. Trademark law — and the

mark registration process — do not exist to advance

the First Amendment, but despite the First

Amendment.

Every trademark or service mark injunction

involves enforcing a speech monopoly on behalf of

the mark owner and silencing others who wish to use

similar words or symbols. See, e.g., San Francisco

Arts & Athletics, Inc. v. United States Olympic

Comm., 483 U.S. 522 (1987) (affirming injunction

barring a group from using the words “Gay Olympic

Games”); Anheuser-Busch, Inc. v. Balducci Publ’ns,

28 F.3d 769, 772, 778-79 (8th Cir. 1994) (enjoining

use of “Michelob Oily” by party commenting on oil

spill in river supplying water to Anheuser-Busch

brewery); Hershey's Co. v. Art Van Furniture, Inc.,

2008 WL 4724756 (E.D. Mich. Oct. 24, 2008)

(enjoining furniture company from using a design of

a brown sofa emerging from a wrapper on its web

site because the image resembled a Hershey's bar).

As a result, “the primary cost of recognizing

property rights in trademarks is the removal of

words from (or perhaps non-entrance into) our

language.” Brother Records, Inc. v. Jardine, 318

F.3d 900, 906 (9th Cir. 2003) (quotation omitted).

Even if a member of the public is able to

defeat a mark owner’s enforcement action, “social

and commercial discourse” can be chilled or even

rendered “impossible” by the mere threat of an

infringement lawsuit. New Kids on the Block v.

News Am. Publ’g, Inc., 971 F.2d 302, 307 (9th Cir.

1992). And it can require extensive litigation for a

member of the public to vindicate his or her right to

free speech when a trademark owner wishes to

exercise its monopoly speech power. See Radiance

Found., Inc. v. NAACP, 25 F. Supp. 3d 865, 901-02

(E.D. Va. 2014) (enjoining organization from calling

the NAACP the “National Association for the

Abortion of Colored Persons” in protest over the

NAACP’s collaboration with Planned Parenthood),

revd, 786 F.3d 316 (4th Cir. 2015) (reversing only

after ACLU provided pro bono assistance with

appeal); Starbucks Corp. v. Wolfe's Borough Coffee,

Inc., 736 F.3d 198, 200-02 (2d Cir. 2013) (affirming

coffee shop’s nght to use the term “Charbucks”

despite opposition by Starbucks, but only after a

trial and three appeals).

This Court has recognized that marks restrict

the public’s ability to speak, but has held that such a

restriction can be justified when it advances a

substantial Government interest. See San Francisco

Arts, 483 U.S. at 536-39 (holding that enforcement of

trademark satisfied Central Hudson standard for

commercial speech restriction). Even when justified,

the enforcement of marks represents a restriction on

the ability of the public to speak. See Eugene

Volokh, Freedom of Speech and Intellectual Property:

Some Thoughts After Eldred, 44 Liquormart, and

Bartnicki, 40 Hous. L. Rev. 697, 698 (2003)

(characterizing copyright law and trademark law as

“speech restrictions’).

Although the ACLU paradoxically has argued

that Section 2(a) is unconstitutional, it agrees that

cancelling a registration results in reducing the

mark owner’s ability to silence others, thereby

increasing the legal rights of the public to speak:

Furthermore, cancelling the

Washington team’s trademark may not

even be effective, because cancelling a

trademark doesn’t prevent the team

from using it. Jt does, however, make it

easier for other people to disseminate tt.

So the Trademark Office decision in this

case might result in even more use of a

distasteful term — not less.

Esha Bandari, ‘You're Not Wrong, You're Just an

A**hole,’ ACLU Blog of Rights (Mar. 6, 2015, 12:30

PM), https://www.aclu.org/blog/free-speech/youre-

not-wrong-youre-just-ahole (emphasis added). But

making it “easier for other people” to use words and

symbols, i.e., freeing them of the need to obtain a

license from a mark owner, means that more speech

would be legally permitted by cancelling the

registrations. The First Amendment is not violated

when more speech is legally permitted.

bh. Some have argued that the First

Amendment problem with the disparagement

provision is that it discriminates based on the

alleged viewpoint expressed in the mark. They point

out that a mark that “may disparage” Asian

Americans (or Native Americans) is not eligible for

registration while non-disparaging marks are

eligible. And, they ask, how about a law that

discriminates based on a political position expressed

in a mark? Would it be constitutional for Congress

to permit registration of “Vote Democratic” brand ice

cream but not “Vote Republican” brand ice cream?

If the Constitution prohibits viewpoint

discrimination in the context of a mark registration,

it is not the First Amendment that does so.

Depending on the facts and _ circumstances

presented, other Constitutional provisions, such as

the Equal Protection, Due Process or Establishment

Clause, might prevent the Government from

discriminating based on content when it issues mark

registrations. See Natl Endowment for the Arts v.

Finley, 524 U.S. 569, 598 n.3 (1998) (Scalia, J.,

concurring) (stating that while the Constitution

would prevent the Government from acting to

promote Republican candidates, that

“unconstitutionality has [nothing] to do with the

First Amendment”); Pleasant Grove City v.

Summum, 555 U.S. 460, 481-82 (2009) (Stevens, J..,

concurring) (stating that the Equal Protection

Clause and, in some instances, the Establishment

Clause — but not the speech provisions of the First

Amendment -—- preclude the Government from

expressing offensive or partisan messages).

As explained above, however, the right to

silence others is not a right that arises under the

First Amendment. Therefore, marginally reducing

that right on alleged viewpoint-discriminatory

grounds does not violate the First Amendment. This

point is illustrated by a copyright case, Golan uv.

Holder, 132 S. Ct. 873 (2012).

In Golan, publishers, orchestra conductors,

musicians and others argued that their First

Amendment rights were violated by a law that re-

extended copyright protection over works that had

previously entered the public domain. The law

prevented them from disseminating written works or

playing music as they wished. /d. at 878. The Court

affirmed the law, but suggested that their First

Amendment rights might be violated if “copyright

protection .. . hinge[d] on the author’s viewpoint.”

Id. at 892. In other words, if a publisher’s ability to

disseminate a written work depended on the

viewpoint expressed by the work, then the

publisher's First Amendment rights might be

violated. That is, viewpoint discrimination in

First Amendment rights. The Court, however, did

not suggest that the copyright holder’s First

Amendment rights would be implicated. This is

because the right to enforce a copyright (and silence

others), like the right to enforce a trademark, is not

a right that arises under the First Amendment. See

id. at 889 (“some restriction on expression is the

inherent and intended effect of every grant of

2 As discussed above with marks, an author might have an

Equal Protection, Due Process or Establishment Clause claim if

he or she were denied a copyright registration due to the

content or viewpoint expressed in the author's work. Further,

Congress's power to enact copyright laws is subject to the

the Progress of Science . . . by securing for limited Times to

Authors .. . the exclusive right” to their writings. U.S. Const.,

art. 1, § 8, cl. 8. The law is unsettled whether the Copyright

Tam’s case differs from a scenario in which a

burden on speech is imposed, such as if a city refused

to plow the snow in front of a home with a “Vote

Republican” sign but would plow if the sign said

“Vote Democratic.” In the snow-plowing case, the

city is unquestionably burdening speech based on

content. By contrast, when the Lanham Act

provides that marks containing certain matter are

unregistrable, speech is not burdened, but the power

to silence others is burdened.

2. Many Federal Trademark And Similar

Laws Discriminate On The Basis Of

Content And Would Fall If The

Disparagement Provision Is Held

Unconstitutional.

The argument advanced above — that the First

Amendment does not protect the right of a speech-

monopolist to enjoin others from speaking — provides

a narrow, coherent basis for decision. A ruling on

this basis will create no tension with any prior

decision of this Court and will have no impact on

overall First Amendment jurisprudence.

Clause requires or prohibits content-based discrimination, due

to uncertainty in how to interpret the Clause’s language “to

promote the Progress of Science.” Compare Mitchell Bros. Film

Grp. v. Cinema Adult Theater, 604 F.2d 852, 856 (5th Cir. 1979)

(stating that the Copyright Clause does not permit content-

based discrimination) with 41 U.S. Op. Atty. Gen. 395

(U.S.A.G. Dec. 18, 1958) (“It has been generally accepted for

years that seditious, libellous, obscene or immoral works are

not entitled to copyright.... Judicial authority has been found

to support this view; none has been found to the contrary.”).

On the other hand, if the disparagement

provision violates the First Amendment, then many

other statutes do as well. For instance, the Section

2(a) provision against registering marks with

“scandalous” or “immoral” matter would violate the

First Amendment because it is a content-based

provision. 15 U.S.C. § 1052(a); see In re Tam, 808

F.3d at 1330 n.1.

Similarly, if the disparagement provision

violates the First Amendment, then so, too, do

dozens of statutes giving special trademark-style

protections to certain patriotic organizations. See

The Last Best Beef, LLC v. Dudas, 506 F.3d 333, 339-

40 (4th Cir. 2007) (“Congress has often removed

specific trademarks from the general trademark

application process.”). These laws give the favored

organizations the “exclusive right to use” the

organization’s name, and frequently its emblems,

symbols, seals, and badges — and sometimes even the

“words and phrases” that the organization uses, as is

the case for Boy Scouts, Girl Scouts and Civil Air

Patrol. 36 U.S.C. §§ 30905, 40306 & 80305.

These laws give the power to enjoin similar

third-party uses without the need to show likelihood

of consumer confusion and render them invulnerable

to normal trademark defenses. See San Francisco

Arts, 483 U.S. at 530-31 (holding that U.S. Olympic

Committee did not need to prove likelihood of

confusion and that “traditional trademark defenses”

did not apply); Wrenn v. Boy Scouts of Am., 2008 WL

4792683, at *4 n.3 (N.D. Cal. Oct. 28, 2008) (stating

that Boy Scouts did not need to prove likelihood of

confusion). “Many of the patriotic or fraternal

organizations chartered by Congress receive

exclusive rights to words or phrases which may be

enforced without regard to the normal standards of

trademark law.” Am. Legion v. Matthew, 144 F.3d

498, 499 (7th Cir. 1998).

The statutes award the special protections as

a means of advancing the patriotic, pro-military or

other laudable purposes of the organization. See

San Francisco Arts, 483 U.S. at 537-38 & n.17

(stating that Congress provided special protections

to the U.S. Olympic Committee to advance the

statutory purposes of the organization). For

example, one statute gives to Future Farmers of

America (whose statutory purposes include to “train

for useful citizenship, and foster patriotism”) the

exclusive right over its name, seals, emblems and

badges. 36 U.S.C. §§ 70902, 70907. Other examples

include:

American Legion, id. §§ 21702, 21705.

Ladies of the Grand Army of the Republic, id.

§§ 130102, 130106.

Little League, id. §§ 130502, 130506.

United Service Organizations, Incorporated or

USO, id. §§ 220102, 220106.

e Veterans of Foreign Wars of the United

States, id. §§ 230102, 230105

There are many other such statutes. 36 U.S.C. §§

20907, 21904, 22306, 22505, 22706, 30106, 30306,

30507, 30706, 40306, 50305, 70506, 140304, 150707,

152306, 152506, 152907, 153104, 153506, 153706,

154106, 154707, 170105, 170307, 190106, 190307,

200306, 220306.

If the disparagement provision of Section 2(a)

is unconstitutional because it discriminates based on

the content of the trademark, then these special

protection laws — which discriminate based on the

patriotic, pro-military or virtuous mission of the

organization — are also unconstitutional.

3. Unregistrable Marks Are Enforceable.

Their Owners Are Fully Capable Of

Silencing Others.

Even if First Amendment rights’ are

implicated by a law that reduces a_ speech-

monopolist’s ability to silence others, the refusal to

the mark owner’s First Amendment right to free

speech.

As explained above, an unregistrable mark is

enforceable under Section 43(a) of the Lanham Act,

15 U.S.C. § 1125(a), and under the common law. See

supra at 4. Mark owners can obtain injunctions and

damages for infringement. They can call upon the

courts to bar others from using the words and

symbols that they wish to use.

The fact that unregistrable marks are

enforceable significantly distinguishes mark

registration from copyright registration. A copyright

infringement action cannot be brought unless the

work has been registered with the Copyright Office.

See 17 U.S.C. § 411(a); Reed Elsevier, Inc. v.

Muchnik, 559 U.S. 154, 158 (2010). Thus, the

refusal to issue a copyright registration has a far

greater impact than the refusal to register a mark.

Furthermore, while the benefits of

registration can be “substantial,” B&B Hardware,

Inc., 135 8S. Ct. at 1300, the benefits vary

considerably from one mark to another. It is not

possible to generalize. For example, the evidentiary

presumptions that come with registration (i.e.,

presumptions of validity, ownership, and exclusive

right to use the mark) provide no added value to

owne’s of well-established marks (e.g., “Washington

Redskins”) because those evidentiary points cannot

be reasonably disputed.

B. Refusing To Register A Mark Is An

Example Of Government Speech.

The USPTO’s refusal to register Tam’s mark

fits within the Government speech doctrine and

therefore does not implicate the Free Speech Clause.

As this Court explained, “[w]hen |the] government

speaks, it is not barred by the Free Speech Clause

from determining the content of what it says.”

Walker, 135 S. Ct. at 2245; see also Johanns v.

Livestock Mktg. Assn., 544 U.S. 550, 553 (2005).

“The Free Speech Clause _ restricts

government's regulation of private speech; it does

not regulate government speech.” Pleasant Grove

City, Utah, 555 U.S. at 467. “[Glovernment

statements (and government actions and programs

that take the form of speech) do not normally trigger

the First Amendment rules designed to protect the

marketplace of ideas.” Walker, 135 S. Ct. at 2245-46.

Because the Government “is entitled to promote a

program, to espouse a policy, or to take a position,”

the Government can _ discriminate ' between

viewpoints when it engages in Government speech.

Id. at 2246.

1. AUSPTO Registration Certificate And

The Principal Register Are

Government Documents.

The Lanham Act requires that a registration

certificate be issued “in the name of the United

States of America,” “under the seal of the USPTO,”

and that it be “signed by the Director.” 15 U.S.C. §

1057(a). The statute further requires that the

registration certificate “shall reproduce the mark”

and “state that the mark is registered on the

principal register.” Jd. An image of a registration

certificate is below:

qauited SHtatrs of Aine ry, ‘“

Oe eee

GOOGLE

Poe Ne AP tre

frees Se & Pe ‘_

weit .

re) ee

en Serr ee ere e

if this Court rules that Section 2(a) of the

Lanham Act is unconstitutional, the USPTO would

have to issue registration certificates with ugly

racist images. The following are examples of racist

marks registered before enactment of the prohibition

against registering disparaging marks.

Amicus Brief for Blackhorse, et. al. at 40-73, In re

Tam. No. 14-1203 (Fed. Cir. July 23, 2015), ECF No.

148.

The Free Speech Clause does not obligate the

Government to issue registration certificates

displaying such hateful words and symbols, or

publish them in its Principal Register.

2. Trademark Registrations Are

Government Speech.

In Walker, this Court upheld Texas’s refusal

to issue specialty license plates featuring the

Jonfederate battle flag. 135 S. Ct. 2239. A Texas

statute provided that the State could refuse to create

a specialty plate “if the design might be offensive to

any member of the public.” Jd. at 2244-45. A refusal

to issue a possibly offensive specialty license plate

was an exercise of Government speech not subject to

challenge on Free Speech Clause grounds. /d. at

2246, 2252-53.

In Walker, the Court found three factors

important, each of which weighs in favor of a finding

of Government speech here.

First, state governments have _ historically

communicated messages through license plates. /d.

at 2248. Here, too, a registration is a means by

which the USPTO communicates to the public. The

USPTO uses a registration certificate and the

Principal Register to inform the public of the validity

of the mark, the identity of the owner, and the

owner's exclusive right to use the mark, subject to

any limitations that the USPTO also communicates

via the registration certificate. 15 U.S.C. § 1057(b).

Although the Government does not communicate

messages through the mark itself, it does

communicate messages through the registration of

the mark. That is the relevant inquiry because Tam

was refused a registration, not a mark.

Second, the Court noted that the public

associates messages on license plates with the

Government, in part because the name of the issuing

state is a part of every plate. Walker, 135 S. Ct. at

2248. Likewise, a registration certificate and the

Principal Register are Government documents.

Indeed, when parties seek to oppose or cancel] the

registration of another party's trademark, they must

petition the TTAB for the obvious reason that a

registration certificate is a Government

communication and the Principal Register is a

Government database.

Third, the Court relied on the fact that the

state had “effectively controlled” the messages it

conveyed by having “final approval authority” over

the messages. Jd. at 2249. Likewise, here, Congress

established criteria over registrability and delegated

responsibility for the registration program to the

USPTO.*

Another relevant consideration is whether the

Government's speech occurs in the context o a

traditional Governmental function. Here, the

USPTO issues registrations to advance traditional

governmental functions — consumer protection and

the protection of private property. Park 'N Fly v.

Dollar Park & Fly, Inc., 469 U.S. 189, 207 (1985).

—

* The fact that Congress set expressive criteria in Section 2(a)

distinguishes this case from the routine issuance of permits

and licenses, contrary to the Federal Circuit's concern. See In

re Tam, 808 F.3d at 1347-48.

The Federal Circuit found that the refusal to

issue Tam’s mark did not fall under the rubric of the

Government speech doctrine, because the Lanham

Act allows many tawdry and unsavory marks to be

registered, marks expressing messages that the

Government surely does not endorse. Jn re Tam, 808

F.3d at 1346-47. This argument is foreclosed by

Walker. In Walker, the Court rejected the argument

that, because Texas could not possibly be endorsing

some of the messages on approved plates, the

rejection of a specialty plate design did not satisfy

Government speech. See Walker, 135 S. Ct. at 2255

(Alito, J., dissenting). Indeed, inconsistency in

Government messaging is unsurprising. Politics and

governance in a democracy involves compromises,

balancing competing interests, and a great deal of

human __s imperfection. The fact that the

Government's messages may be mixed, or subject to

criticism as_ hypocritical, imcomprehensible' or

contradictory, does not make the speech any less

Government speech.

Il. THE DISPARAGEMENT PROVISION IS

NOT VOID FOR VAGUENESS.

A. The Standard Of Review Is Lenient

Because Section 2(a) Of The Lanham Act

Does Not Make Any Conduct Unlawful.

The doctrine that a statute can be void for

vagueness “is an outgrowth not of the First

Amendment, but of the Due Process Clause of the

Fifth Amendment.” United States v. Williams, 553

U.S. 285, 304 (2008). The doctrine ensures that

imprisonment or criminal or civil fines are not

imposed based on the violation of an unduly vague

law or regulation. See, e.g., id. at 304; Grayned v.

City of Rockford, 408 U.S. 104, 108-09 (1972) (void-

for-vagueness doctrine ensures that statutes and

regulations give a “person of ordinary intelligence a

reasonable opportunity to know what 1s prohibited,

so that he may act accordingly”) (emphasis added).

Section 2(a) of the Lanham Act, however,

prohibits no conduct or speech. It imposes no

criminal sanction or civil penalties. It is impossible

to “violate” Section 2(a).

A greater degree of vagueness is therefore

tolerated by the Constitution: “The degree of

vagueness that the Constitution tolerates - as well

as the relative importance of fair notice and fair

enforcement — depends in part on the nature of the

enactment.” Hoffman Estates v. The Flipside,

Hoffman Estates, Inc., 455 U.S. 489, 498 (1982); see

also F.T.C. v. Wyndham Worldwide Corp., 799 F.3d

236, 249 (3d Cir. 2015) (“The level of required notice

for a person to be subject to liability varies by

circumstance.”). Economic regulation is “subject to a

less strict vagueness test.” Hoffman Estates, 455

U.S. at 498. Further, “[t]he Court has also expressed

greater tolerance of enactments with civil, rather

than criminal, penalties because the consequences of

imprecision are qualitatively less severe.” Jd. at 498-

99; see also Finley, 524 U.S. at 589 (stating that

criminal statutes are subject to more stringent void-

for-vagueness review).

While statutes and regulations that impose

civil penalties on speech merit careful review

because of their potential] chilling effect, see FCC v.

fox TV Stations, Inc., 132 S. Ct. 2307, 2317 (2012),

where the statute in question does not threaten

speech with criminal or civil penalties, the scrutiny

is relaxed. See Finley, 524 U.S. at 589 (applying a

relaxed vagueness standard to review a statute

setting criteria for NEA grants even though, “as a

practical matter .. . artists may conform their

speech to what they believe to be the decisionmaking

criteria in order to acquire funding’).

Because of the “nature of the enactment,”

Section 2(a) is entitled to lenient scrutiny under the

void-for-vagueness doctrine. Hoffman Estates, 455

U.S. at 498.

B. The Term “May Disparage” Is Not

Unconstitutionally Vague.

To be void for vagueness, a statute must “fail

to provide the kind of notice that will enable

ordinary people to understand what conduct it

prohibits . . . [or] authorize and even encourage

arbitrary and discriminatory enforcement” by

Government officials. City of Chicago v. Morales,

527 U.S. 41, 56 (1999). Neither concern applies here.

1. The Disparagement Provision Gives

Fair Warning.

Although a statute must give “people of

ordinary intelligence a reasonable opportunity to

understand what conduct it prohibits,”4 Hill ov.

Colorado, 530 U.S. 703, 732 (2000), the Due Process

Clause does not require “perfect clarity and precise

guidance.” Ward v. Rock Against Racism, 491 U.S.

781, 794 (1989). Because we are “[c]londemned to the

use of words, we can never expect mathematical

certainty from our language.” Grayned, 408 U.S. at

110. Courts should look to “[d]ictionary definitions

and old-fashioned common sense” in evaluating

whether a statutory term is unduly vague. Wag

More Dogs, LLC v. Cozart, 680 F.3d 359, 371 (4th

Cir. 2012).

Dictionaries contemporaneous with the 1946

enactment of the disparagement provision of Section

2(a) contained consistent definitions of “disparage”

as meaning “to dishonor by comparison with what is

inferior,” “to speak slightingly of,” “to deprecate,” to

“undervalue,” “to regard or speak of slightingly,” “to

affect or injure by unjust comparison... .” Harjo v.

Pro-Football, Inc., 50 U.S.P.Q.2d 1705, at *35

(T.T.A.B. 1999) (quoting Webster’s New International

Dictionary, G. & C. Merriam Company (2nd ed.

* As noted, Section 2(a) does not “prohibit” any conduct.

1947) and New “Standard” Dictionary of the English

Language, Funk and Wagnalls Company (1947)).

From these definitions, the TTAB stated that to

determine whether a trademark contains matter

that “may disparage,” it must determine whether the

matter “may dishonor by comparison with what is

inferior, slight, deprecate, degrade, or affect or injure

by unjust comparison.” Id.

This Court’s use of “disparage” in Marsh uv.

Chambers, 463 U.S. 783 (1983), further

demonstrates that “disparage” is not

unconstitutionally vague. In Marsh, the Court

employed “disparage” when it formulated the test

under the Establishment Clause for the scope of

permitted prayer to begin a legislative session: “The

content of the prayer is not of concern to judges

where, as here, there is no indication that the prayer

opportunity has been exploited to proselytize or

advance any one, or to disparage any other, faith or

belief.” Id. at 794-95 (emphasis added); see also

Town of Greece v. Galloway, 134 8. Ct. 1811, 1823-24

(2014) (applying Marsh disparagement test); Rubin

vu. City of Lancaster, 710 F.3d 1087 (9th Cir. 2013)

(permitting legislative prayer because it did “not

proselytize, or advance or disparage (Marsh's

language)” a _ particular faith); Simpson ov.

Chesterfield Cty. Bd. of Supervisors, 404 F.3d 276,

° PFI agrees that, when the Lanham Act was enacted, multiple

dictionaries contained “materially identical definitions of

‘disparage.” Memorandum in Support of Motion for Summary

Judgment on Constitutional Claims at 19 n.14, Pro-Footbail,

Inc. v. Blackhorse, No. 14-cv-01043 (E.D. Va. Feb. 23, 2015),

ECF No. 56.

284 (4th Cir. 2005) (upholding ordinance adopting

Marsh disparagement language).

The First Circuit has also observed that

“words like ‘demean’ or ‘disparage’ have reasonably

clear meanings.” Ridley v. Massachusetts Bay

Transp. Auth., 390 F.3d 65, 95 (1st Cir. 2004)

(holding that guidelines prohibiting bus

advertisements that “disparage” individuals or

groups were not void for vagueness).

Further, the inclusion of the word “may” in

front of “disparage” reduces any potential vagueness.

The insertion of “may” gives notice that a trademark

is not eligible for registration if there is some

evidence of its disparaging character. Thus, it is not

necessary to gather and weigh all relevant evidence

to determine whether a mark is ineligible for

registration; one need only check if there is enough

evidence to find that a mark “may” disparage. See,

e.g., Blackhorse, 111 U.S.P.Q.2d at *29 (once

evidence has been adduced that a trademark

contains matter that may disparage, “the mere

existence of differing opinions cannot change the

conclusion”).

Finally, “may disparage” is less vague than

other terms that have been upheld in vagueness

challenges. For example, in National Endowment

for the Arts v. Finley, the Court reviewed a statute

directing the NEA to fund works of art based on

“artistic excellence and artistic merit . . . taking into

consideration general standards of decency and

respect for the diverse beliefs and values of the

American public.” Finley, 524 U.S. at 572, 589.

Although this language was “undeniably opaque,” it

was not void for vagueness. /d. at 576, 584, 588.

2. The Disparagement Provision Does

Not Authorize Arbitrary And

Discriminatory Enforcement.

It is not clear that the “arbitrary and

discriminatory enforcement” prong of the vagueness

test should apply; Section 2(a) is a not a statute that

is “enforced” as it prohibits no conduct or speech. If

it does apply, then it should be applied under a

lenient review standard, as discussed above.

In any event, the Lanham Act and USPTO

regulations ensure that decisions are made in an

evenhanded and transparent way — they do not

“authorize” or “encourage” “arbitrary and

discriminatory” enforcement. Examining Attorneys

are lawyers whose decisions approving or refusing

trademark registrations are set forth in written

letters that state the reasons for the decision. Those

letters are published on the USPTO web site and can

be reviewed by the public. See TRADEMARK MANUAL

OF EXAMINING PROCEDURE (“T.M.E.P.” or “Manual”)

§§ 108.01, 705. Likewise, TTAB Administrative

Trademark Judges who review Examining Attorney

decisions act in a public manner with controls that

prevent arbitrary and discriminatory action. The

TTAB consists of the Director and Deputy Director of

the USPTO, the Commissioner for Patents, the

Commissioner of Trademarks and Administrative

Trademark Judges appointed by the Secretary of

Commerce in consultation with the Director. 15

U.S.C. § 1067(b). The members of the TTAB are

publicly known. ‘The TTAB sits in three-member

panels when it reviews Examining Attorney

decisions. 37 C.F.R. §§ 2.129(a) & 2.142(e)(1). TTAB

decisions are written and published, identify the

Judges who served on the panel, and are available

for review and discussion by the public.

The Manual articulates the standard that

Kxamining Attorneys will apply in determining

whether a trademark contains matter that “may

disparage,” including whether matter “may be

disparaging to a substantial composite of the

referenced group.” T.M.E.P. § 1203.03(b)G). The

Manual explains further that disparagement is

considered in relation to the goods and services at

issue. /d. It explains that intent is not a factor in

the analysis. Jd. And it contains citations to the

holdings of numerous cases explaining where

disparagement was found, where it was not found,

and why. /d. § 1203.03(b)(ii).

Tam has argued that the disparagement

provision of Section 2(a) is void for vagueness

because there are multiple examples in which

different Examining Attorneys came to different

conclusions as to whether trademarks with similar

matter may disparage. But focusing only on

inconsistent Examining Attorney decisions is_ to

focus on a biased sample. It ignores all the

consistent decisions of Examining Attorneys. Thus,

while Tam and his supporting amici will likely be

able to find seemingly inconsistent Examining

® Brief for Respondent in Opposition to a Writ of Certiorari at

ol.

Attorney decisions, their disparagement examples

will be cherry-picked and will not reflect a

systematic, empirical inquiry.

It is unavoidable — and not unconstitutional —

that determinations by frontline Government

employees, like USPTO Examining Attorneys, will

not always be consistent. See United States v. Mead,

533 U.S. 218, 224, 233-34 (2001). The USPTO

examines more than 300,000 _ registration

applications each year. Brief for the Petitioner at 51.

Furthermore, examples’ of inconsistent

Examining Attorney decisions do not equate

“arbitrary and discriminatory” enforcement by the

USPTO, since every applicant whose application was

refused had the right to appeal to the TTAB. See 15

U.S.C. § 1070. And Tam will not be able to find two

TTAB decisions that reach different outcomes over

whether trademarks with the same matter “may

disparage.”?

Any seemingly’ inconsistent Examining

Attorney decisions are also not relevant to

determining whether Section 2(a) is vague when

applied to “slants.” This Court has stated that

whether a statute is void for vagueness is a case-

7 In In re Squaw Valley Dev. Corp., 80 U.S.P.Q.2d 1264

(l.T.A.B. 2006), the TTAB found that certain trademarks for

clothing that contained “squaw” were disparaging to Native

American women, but explained that a trademark containing

“squaw for ski equipment was not disparaging because, in

connection with those goods. the likely meaning was a

shorthand reference to the Squaw Valley, California ski area

rather than to Native American women.

specific inquiry that depends on the specific facts

presented. “We consider whether a statute is vague

as appled to the particular facts at issue, for ‘al

plaintiff who engages in some conduct that is clearly

proscribed cannot complain of the vagueness of the

law as applied to the conduct of others.” Holder v.

Humanitarian Law Project, 561 U.S. 1, 18-19 (2010)

(quoting Hoffman Estates, 455 U.S. at 495). The

question whether Section 2(a) is unduly vague when

applied to “slants” is different from whether it is

unduly vague when applied to “n*ggers” or to

“redskins” or to some other term.*

“In Johnson v. United States, 135 S. Ct. 2551 (2015), the Court

entertained a facial challenge to the Armed Career Criminal!

Act, which enlarged criminal sentences by at least five years for

defendants previously convicted of three violent felonies. The

Court held that the residual clause of the statutory definition of

“violent felony” was void for vagueness, even though there were

some crimes that would surely fall within the residual clause.

In Johnson, whether a prior crime fit within the residual clause

did not require courts to examine whether the facts of the prior

crime involved violent conduct, but whether in the “ordinary

case,” the crime in question involved conduct that poses a

serious potential risk of physical injury. /d. at 2557; see also

Welch v,. United States, 136 5. Ct. 1257, 1262 (2016). Contrary

to the statute in Johnson, Section 2(a) does not turn on

analyzing imponderable abstractions, but on the “particular

facts” of the trademark at issue. Humanitarian Law Project,

561 U.S. at 18-19. These facts will necessarily vary from one

trademark to another. See, e.g., Blackhorse, 112 F. Supp. 3d at

472-88 (reviewing the facts establishing that “redskins” may

disparage Native Americans, facts that are not relevant to

other trademarks). For this reason and because of the lenient

standard applicable to non-punitive statutes, Section 2(a)—

uplike the statute in Johnson—is not amenable to a facial

challenge for vagueness.

Ill. SECTION 2(A) SHOULD BE

INTERPRETED ACCORDING TO ITS

PLAIN MEANING,

A. The Inclusion Of “May” In “May

Disparage” Means That Proof Of Actual

Disparagement Is Not Required For A

Mark To Be Unregistrable.

We agree with Tam that the disparagement

provision should be interpreted according to its plain

meaning. Brief for Respondent in Opposition to a

Writ of Certiorari at 14-16. But Tam overlooks the

word “may.” /d. at 16 (“The statute just says

‘disparage.”’).

In fact, a mark is unregistrable if it comprises

“matter which may disparage” persons. 15 U.S.C. §

1052(a) (emphasis added). Congress’s insertion of

“may” before “disparage” was deliberate. The

multiple other bars to registration in 15 U.S.C. §

1052 conspicuously lack “may.” For example, to

refuse registration of an immoral, deceptive, or

scandalous mark, the statute requires that the mark

contain matter that actually is “immoral, deceptive,

or scandalous.” 15 U.S.C. § 1052(a). The contrast is

plain and significant. See Jn re Lebanese Arak Corp.,

94 U.S.P.Q.2d 1215, at *2 (T.T.A.B. 2010) (“The

structure of Section 2(a), with various refusals and,

therefore, different tests, interwoven into its various

parts, is the result of its legislative development.”).

The drafting history also demonstrates that

Congress deliberately inserted “may” before

“disparage.” Initial House and Senate bills provided

that a trademark is ineligible for registration if it

“tends to” disparage.® In 1942, the House Committee

on Patents marked up a Senate bill and substituted

“may” in place of “tends to.”!° Subsequent bills!' and

the enacted legislation contained the “may

disparage” standard instead of “tends to disparage.”

15 U.S.C. § 1052(a). This is significant. See Doe v.

Chao, 540 U.S. 614, 622 (2004) (relying on drafting

history to interpret statute). “May disparage” is a

lower standard than “tends to disparage,” which is

itself a lower standard than “does disparage.”

It is well-established “[iJn common and legal

usage” that “may’ reflects possibility, not certainty.”

United States v. Arias-Espinosa, 704 F.3d 616, 619

(9th Cir. 2012); see also FTC v. Morton Salt Co., 334

U.S. 37, 46 (1948) (“may” requires only “reasonable

possibility”); United States v. Lexington Mill &

Elevator Co., 232 U.S. 399, 411 (1914) (applying

ordinary meaning of “may”). Accordingly, it is not

® Hearings on H.R. 4744 Before the Subcomm., on Trademarks

of the House Comm, on Patents, 76th Cong,., Ist Sess., at 1]

(1939) (Section 2(a) contains “tends to disparage” standard);

Hearings on H.R. 102, H.R, 5461, 8. 895, Refore the Subcomm.

on Trademarks of the House Comm. on Patents, 77th Cong., Ist

Sess., at 1-2 (1941) (Section 2(a) of H.R. 102, which is

“‘dentical” to S. 895, contains “tends to disparage” standard);

id. at 15 (by contrast, H.R, 5461 contains “may disparage”

standard).

0 H.R. Rep. No, 2283, at 2 (1942) (recommending passage of 5.

895 with certain amendments, including: “strike out ‘tends to’

and insert in lieu ‘may” before “disparage”).

| Hearings on H.R. 82 Before the House Comm. on Patents,

78th Cong., Ist Sess., at 2 (1943); Hearings on H.R. 82 Before

the Subcomm. of the Senate Comm. on Patents, 78th Cong., 2d

Sess., at 2 (1944).

necessary that the USPTO have evidence that a

mark actually disparages in order to be

unregistrable, only that it may disparage.

One commentator!* explained the significance

of “may” before “disparage” as follows:

Section 2(a) provides that registration

should be refused when a_ mark

‘|cJonsists of or comprises immoral,

deceptive, or scandalous matter; or

matter which may disparage

persons .... The statute does not

prohibit ‘matter which disparages;’

rather, it prohibits ‘matter which may

disparage. The latter is certainly a

broader prohibition than the former.

Kimberly A. Pace, The Washington Redskins Case

and The Doctrine of Disparagement: How Politically

Correct Must a Trademark Be?, 22 Pepp. L. Rev. 7,

33 (1994). Therefore, “[t]o cancel a mark because it

disparages, the mark has to have the potential to

disparage the group at the date of its registration.”

Id, at 33.n.174.

B. Intent To Disparage Is Not Required.

The inclusion of “may” also establishes that

intent to disparage is not required in order for a

mark to be ineligible for registration. Blackhorse,

112 F. Supp. 3d at 472.

'? The commentator is now the Honorable Kimberly Moore of

the Federal Circuit.

Other parts of Section 2(a) also make this

point clear. The statute asks whether “matter” in

the mark may disparage. “Matter” is the subject and

“may disparage” is the verb. But, “matter” is

inanimate and cannot possess intent. Likewise, the

language shows that the relevant inquiry focuses on

the “nature” of the mark, and not the owner's intent.

See 15 U.S.C. § 1052(a) (“No trademark . . . shall be

refused registration . . . on account of its nature

unless it... [cjonsists of or comprises . . . matter

which may disparage... .”) (emphasis added).

Indeed, if the rule were otherwise, it would be

quite difficult for Examining Attorneys to ascertain

the intent of registration applicants. See Negusie v.

Holder, 555 U.S. 511, 527-28 (2009) (Scalia, J.,

concurring).

C. Evidence Of A “Substantial Composite” Is

One Way To Demonstrate That A Mark

Contains Matter That “May Disparage,”

But Is Not The Only Way.

To evaluate whether Tams marks may

disparage, the TTAB’ considered whether a

“substantial composite” of people of Asian descent

consider “slants” to be disparaging. Jn re Tam, 108

U.S.P.Q.2d 1305, at *1 (T.T.A.B. 2013); see also

Blackhorse, 111 U.S.P.Q.2d at *5 (employing

substantial composite test). The Federal Circuit has

used the “substantial composite” test in the

disparagement context, but not through reasoned

analysis. In Jn re Geller, 751 F.3d 1355, 1358 (Fed.

Cir. 2014), cert. denied, 135 S. Ct. 944 (2015), the

parties agreed that the Court should employ a

“substantial composite” test and the Court did so for

that reason. Subsequently, in Tam, the panel cited

Geller as precedent for the “substantial composite”

test. Jn re Tam, 785 F.3d 567, 571 (Fed. Cir. 2015),

vacated by 808 F.3d 1321 (Fed. Cir. 2015).

There can be no doubt that if a substantial

composite of the referenced group view a mark as

disparaging, then the mark contains matter that

“may disparage.” But, while evidence of the views of

a “substantial composite” is one way to demonstrate

that a mark “may disparage,” it should not be

assumed to be the only way to prove it. See Flowers

v. State, 220 S.W.3d 919, 922 (Tex. Crim. App. 2007)

(“Just as there is more than one way to skin a cat,

there is more than one way to prove a prior

conviction”).

For example, dictionaries, scholarly articles,

evidence of usage, and admissions by a party, among

other evidence, are all clearly probative to whether a

mark contains matter that “may disparage.” See

Fed. R. Evid. 401. And, indeed, the TTAB has relied

upon such forms of evidence when applying its

“substantial composite” test. See, e.g., Blackhorse,

111 U.S.P.Q.2d at *28-29; Tam, 108 U.S.P.Q.2d at

*1-2 (citing dictionaries); In re Heeb Media, LLC, 89

U.S.P.Q.2d 1071, *4-5 (T.T.A.B. 2008) (same); see

also In re Geller, 751 F.3d at 1358-59 (citing

dictionaries). The TTAB has stated that evidence of

the general perception of the meaning of a term can

“serve to support a finding that the referenced group

finds the term to be disparaging.” Blackhorse, 111

U.S.P.Q.2d at *4 n.15. The TTAB has needlessly

complicated things. Such evidence is directly

probative to the “may disparage” question, a

question that does not need to be mediated by a

“substantial composite” test.

The origin of the “substantial composite” test

demonstrates that it is not logical to view it as the

sole means of providing that a mark “may

disparage.” The Federal Circuit’s predecessor coined

the term “substantial composite” in a case deciding

whether a mark contains matter that actually is

scandalous under Section 2(a). In Jn re McGinley,

660 F.2d 481 (C.C.P.A. 1981), the Court stated that

“[wjhether or not the mark, including innuendo, is

scandalous is to be ascertained from the standpoint

of not necessarily a majority, but a substantial

composite of the general public.” Jd. at 485; see also

In re Mavety Media Grp., Ltd., 33 F.3d 1367, 1371

(Fed. Cir. 1994). In Harjo, the TTAB borrowed

“substantial composite” from the “is scandalous”

context for use in the “may disparage” context.

Harjo, 50 U.S.P.Q.2d 1705, *34-36 (T.T.A.B. 1999).

Since Harjo, the TTAB has continued to use

“substantial composite” in the “may disparage”

context. T.M.E.P. § 1203.03(b). It is ilogical,

however, to use an expression relevant to whether a

mark contains matter that actually is scandalous as

the sole means of assessing whether matter may

disparage, since “may disparage” requires only a

potential to disparage. See supra at 35-37.

For these reasons, this Court’s opinion should

clarify that satisfying a “substantial composite” test

is not the only way to demonstrate that a mark

contains matter that “may disparage.” In short,

satisfying the “substantial composite” test is

sufficient, but not necessary, to demonstrate that a

mark contains matter that may disparage.

CONCLUSION

For the foregoing reasons, this Court should

reverse the judgment of the Federal Circuit.

November 15, 2016

Respectfully Submitted,

JESSE A. WITTEN

Counsel of Record

TORE T. DEBELLA

PATRICK H. THOMPSON

DRINKER BIDDLE & REATH LLP

1500 K Street, NW

Washington, DC 20005

(202) 842-8800

Jesse.Witten@dbr.com

ADAM G. YOFFIE

DRINKER BIDDLE & REATH LLP

105 College Road East

Princeton, NJ 08542

(609) 716-6500

Counsel for Amici Curiae

Amanda Blackhorse, Marcus

Briggs-Cloud, Phillip Gover,

Jillian Pappan and Courtney

Tsotigh

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.