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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0662%3A17

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2016

## 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,
v.

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

i
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.

n

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 ..........

23

26

26

27

iv

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..,

ae
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,

CE

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

1x
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

x

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

xl

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.

1

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.

2

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

3

(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

4

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

5

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”).

6
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,

7

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.

8

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

9

“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.

10

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

1]

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’).

12

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

13

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).

14

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
copyright may infringe on non-copyright holders’
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

copyright”).2

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
Copyright Clause, which gives Congress the power to “promote
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

15

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.”).

16

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

17

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.

18

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
register a mark is not significant enough to burden
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.

19

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

20

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

21

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.

23

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.

24

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.

25

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.

26

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

27

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

28

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.

29

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.

30

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.

3]

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

32

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.

33

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.

J4

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.

35
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

36

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).

37

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.

38

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

39

“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

40

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

41

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

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0662%3A17. Public record. Not legal advice.