Intellectual Property
In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), aff'd sub nom. Matal v. Tam, 582 U.S. ___ (2017)
Study notes for In re Tam: professor notes, cold call prep, exam angles, and memory aids.
The disparagement clause of the Lanham Act is unconstitutional as it violates the First Amendment's free speech protections.
In re Tam is a landmark case addressing the intersection of trademark law and free speech. Professor would emphasize that Simon Tam's attempt to register the trademark 'The Slants' was rooted in a desire to transform a derogatory term into a means of empowerment for Asian Americans. The case highlights the First Amendment implications of the Lanham Act's disparagement clause, leading to discussions about the balance between protecting individuals from disparaging speech and upholding free speech rights. The Federal Circuit's ruling underscored the principle that the government cannot restrict speech based on its content, reinforcing the notion of viewpoint neutrality in free expression.
Moreover, it is essential to understand the broader implications of this decision in the context of trademark registration: the ruling not only granted Tam the right to his trademark but also challenged the authority of the PTO to deny registration based on perceived disparagement. This could potentially change the landscape of trademark law and the registration of controversial marks in the future.
DPC: Disparagement prohibits communication (when it violates free speech rights)
| Case | Distinction |
|---|---|
| McKee v. Laurion | McKee involved defamation claims rather than trademark registration and focused on the truth as a defense, unlike In re Tam which addressed free speech in the context of trademark law. |
| Rogers v. Grimaldi | Rogers established a test for assessing the use of trademarks in titles of artistic works; unlike In re Tam, it did not engage with disparagement but rather the artistic expression defense under the First Amendment. |
| santa fe independent school district v. doe | Santa Fe dealt primarily with government-sponsored speech in schools, focusing on religion in public forums rather than the content of trademark registrations. |
The ruling protects individual creative expression and promotes a marketplace of ideas where diverse viewpoints can coexist, aligning with First Amendment protections.
Critics argue that allowing such trademarks could perpetuate harmful stereotypes and foster environments of discrimination, undermining the dignity of affected groups.
This case frequently appears on exams focusing on First Amendment issues in trademark law. Students should be prepared to discuss the balance between free speech rights and restrictions on disparaging trademarks.