ABA files amicus brief in Lee v. Tam to correct errors in trademark law made by Federal Circuit

"American Bar Association" by Tony Webster. Licensed under CC BY 2.0.

“American Bar Association” by Tony Webster. Licensed under CC BY 2.0.

In late September, the U.S. Supreme Court decided that it would hear and issue a ruling in Lee v. Tam, a case which will decide, at least for the foreseeable future, whether names or logos which are disparaging to certain ethnic demographics can be protected by federal trademark laws. The appeal comes after the U.S. Court of Appeals for the Federal Circuit (Fed. Cir. ) affirmed an appeal from the leader of an Asian-American rock band who insists that it’s trying to reappropriate a name which has been used disparagingly against Asian-Americans in the past.

Lee v. Tam arises out of a U.S. Patent and Trademark Office decision to deny federal trademark registration to The Slants, an Asian-American dance-rock band led by frontman Simon Shiao Tam. The USPTO’s Trademark Trial and Appeal Board (TTAB) overturned a trademark application filed by Tam in 2010 to protect the use of the phrase “The Slants” in commerce, arguing that the mark was disparaging to those of Asian descent and should not be protected through federal trademarks.

The case hinges upon language contained within federal statute 15 U.S.C. § 1052, which governs trademarks which are able to be registered on the principal register, or the primary register of trademarks maintained by the USPTO. Title 15 of U.S. Code is the area of federal law codified by the Lanham Act, a law enacted in 1946 to serve as the primary statute of federal law regarding legal activities involving trademarks. Part of Section 1052 notes that a trademark can be denied registration on the principal register if the word or design mark is disparaging to persons either living or dead, institutions, beliefs or national symbols.

A brief submitted on behalf of petitioner Michelle K. Lee, director of the USPTO and representing the federal government in this case, argues that the prohibition of disparaging trademarks is facially constitutional under the First Amendment. Lee and the USPTO take the position that 15 U.S.C. § 1052(a) does not restrict free speech in commerce but rather the ability to take part in a program sanctioned by the federal government. The brief says that Fed. Cir. erred when it said that Section 1052(a) has been applied inconsistently, focusing on individual cases and not the “‘strong medicine’ of facial invalidation.”


On Wednesday, November 16th, the American Bar Association (ABA) filed its own amicus brief on the case in support of neither party. In the brief, the ABA takes no official opinion on whether the disparagement provisions of the Lanham Act are invalid in the face of constitutionally-protected free speech. The organization does want to correct what it sees as “certain principles of trademark law erroneously set forth by the court of appeals,” however.

The ABA argues that Federal Circuit misapplied the basics of U.S. trademark law in confusing the separate concepts of mark validity and mark registrability. Specifically, the Federal Circuit’s decision seemed to indicate to the ABA that a determination of unregistrability for a mark on the principal register would also restrict the ability to use that mark in commerce. “[Federal Circuit’s] treatment of the issue in this case may improperly suggest the question is an open one: It is not,” the brief reads. The ABA criticized the appellate court’s application of a rule from In re McGinley, a 1981 case tried by the federal court predecessor to Fed. Cir. This case affirmed the rejection of a trademark and service mark on material including a nude couple kissing on the basis that the matter was immoral or scandalous, making it unregistrable under terms of the Lanham Act. In In re Tam, Fed. Cir. noted that the rule in McGinley which maintains that a mark can still be used in commerce even if invalid for registration has been widely criticized. “This observation could be misread as suggesting that commentators have criticized this particular aspect of McGinley, rather than McGinley’s ultimate constitutional holding,” the brief reads.

The ABA also notes that just because a mark is invalid for placement on the principal register doesn’t mean that the mark itself is completely unprotectable under the Lanham Act. “Federal registration is not a prerequisite for a cause of action under Section 43(a) of the Lanham Act,” the brief states. This section of the Lanham Act, codified under 15 U.S.C. § 1125, prohibits the use of marks which contain false designations of origin, false descriptions or cause dilution. Subsection (a) specifically enables a party to bring a civil action to U.S. court if they charge that another party is liable of using a word or symbol that either causes confusion with other goods or services sold or misrepresents the characteristics or geographic origin of the product. “Courts have routinely recognized the eligibility for protection under that statute of certain designations not qualifying for federal registration,” the ABA’s brief reads. Other unregistrable marks which can be protected in this way include trade names and the titles of individual creative works. Section 43(c) (15 U.S.C. § 1125(c)), which offers legal protection for famous marks against likely dilution, is another area of the Lanham Act where the ABA notes that registration of a trademark on the principal register is not necessarily required in order to pursue litigation against a diluting mark. State law and federal agencies, such as the U.S. International Trade Commission, also provide avenues to pursue legal action against those infringing on an unregistrable trademark.

The ABA also sought to clear up what it felt was the Federal Circuit’s understatements of the benefits of having a trademark listed on the principal register. Despite the avenues that are available for filing a civil action to protect an unregistrable mark, trademark registration does offer significant benefits. According to the ABA, Federal Circuit didn’t discuss an unregistrable trademark owner’s inability to take up certain causes of action against counterfeiters. The ABA also wanted to remind the court that the existence of a trademark on the principal register is relevant in inquiries on whether a mark is famous enough to warrant protection against dilution. The ABA called on the Supreme Court to reject any suggestion that the denial of federal registration “does not necessarily eliminate all federal or common-law rights to the underlying mark… Although the ABA does not take a position on the merits of the question presented, it urges the court to answer that question in a manner not disturbing these basic propositions of United States trademark law.”


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Join the Discussion

3 comments so far.

  • [Avatar for EG]
    November 29, 2016 07:47 am

    Hey Gene,

    You right, the ABA should be embarrassed for filing this drivel. And it’s yet one more reason why I’ll never EVER rejoin the ABA.

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 27, 2016 11:47 am


    I agree. The Federal Circuit was correct. Those who disagree are just exalting political correctness above the First Amendment.

    It is also disingenuous for the ABA to say that the Federal Circuit doesn’t understand trademark law. To pretend that there are not very real and significant advantages to having a federal trademark registration is to ignore reality. Frankly, the ABA should be embarrassed.


  • [Avatar for Anon]
    November 27, 2016 07:37 am

    Disappointed in the ABA’s nit-picking.

    They should notice that this area of the law includes the notion of “chilling” speech. As it is, they attempt a difference without a distinction.