IN THE SUPREME COURT OF THE UNITED STATES

_______________

No. A-______
MICHELLE K. LEE, DIRECTOR, U.S. PATENT AND TRADEMARK OFFICE
v.
SIMON SHIAO TAM
_______________
APPLICATION FOR AN EXTENSION OF TIME
WITHIN WHICH TO FILE A PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
_______________
The Solicitor General, on behalf of the Director of the
United States Patent and Trademark Office (PTO), respectfully
requests a 30-day extension of time, to and including April 20,
2016, within which to file a petition for a writ of certiorari
to review the judgment of the United States Court of Appeals for
the Federal Circuit in this case.

The court of appeals, sitting

en banc, entered its judgment on December 22, 2015.

Unless

extended, the time within which to file a petition for a writ of

certiorari will expire on March 21, 2016.

The jurisdiction of

this Court would be invoked under 28 U.S.C. 1254(1).

A copy of

the opinion of the en banc court of appeals is attached.

App.,

infra, 1a-47a.
1.

a.

This case involves a First Amendment challenge to

Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a).

Trademark

2
rights exist at common law, and the holder of a trademark may
use and enforce the mark without federal registration.

See,

e.g., B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct.

1293,

1299

(2015).

But

provides certain benefits.

registration

under

the

Lanham

Act

For example, registration provides

prima facie evidence of the validity of the mark, the ownership

of the mark, and the owners exclusive right to use the mark in
connection

with

certain

goods

or

services

in

commerce.

15

U.S.C. 1057(b).
The Lanham Act provides that some marks may not receive the
benefits of registration.

As relevant here, Section 2(a) of the

Act provides that a trademark may be refused registration when

it [c]onsists of
falsely

suggest

connection

matter which may disparage or

with

persons,

living

or

dead,

institutions, beliefs, or national symbols, or bring them into

contempt, or disrepute.
b.

15 U.S.C. 1052(a).

Respondent is a member of a dance-rock band called

The Slants.

In 2011, he sought federal registration of the

proposed mark THE SLANTS in connection with performances by his

band.
under

A PTO trademark examining attorney refused registration

15

U.S.C.

1052(a)

on

the

ground

that

the

mark

is

disparaging to persons of Asian ancestry.

The Trademark Trial and Appeal Board affirmed.

See In re

Tam, No. 85472044, 108 U.S.P.Q. 2d (BNA) 1305 (T.T.A.B. 2013).

3
The Board explained that the proposed mark is used to refer to
an identifiable group of people -- persons of Asian ancestry -and that the mark is disparaging to a substantial composite of
such people.

The Board further explained that its refusal to

register

the

mark

because

denial

of

was

consistent

registration

with

does

the

not

First

Amendment

suppress

speech

or

proscribe conduct; rather, it simply prevents respondent from

calling upon the resources of the federal government to assist
him in enforcing the mark.
2.

A panel of the court of appeals affirmed.

See In re

Tam, 785 F.3d 567 (Fed. Cir. 2015), vacated on rehearing, No.
2014-2013, 600 Fed. Appx. 775 (Fed. Cir. 2015).
rejected
finding

respondents
the

concluded

mark

that

argument

disparaging
substantial

that

under

the

Board

Section

evidence

The court first

had

2(a).

supports

erred
The

the

in

court

Boards

conclusions that the mark THE SLANTS refers to people of Asian

descent and that the mark is likely offensive to a substantial
composite of people of Asian descent.
court

noted

that

the

definitions

in

Id. at 570-571.
evidence

The

universally

characterize the word slant as disparaging, offensive, or an

ethnic slur when used to refer to a person of Asian descent.
Id. at 571.
The

court

rejected

respondents

various

constitutional

challenges, including his facial First Amendment challenge to

4
the disparagement provision in Section 2(a).

Relying on circuit

precedent,

PTOs

the

court

explained

that

the

refusal

to

register [the] mark does not affect his right to use it; [n]o
conduct is proscribed, and no tangible form of expression is
suppressed; and so respondents First Amendment rights are not
abridged by the refusal to register his mark.

785 F.3d at

571-572 (quoting In re McGinley, 660 F.2d 481, 484 (C.C.P.A.

1981));

see

ibid.

(citing

other

reaching the same conclusion).

Federal

Circuit

decisions

Judge Moore, the author of the

panel opinion, urged the court to revisit [its prior] holding

on the constitutionality of 2(a) of the Lanham Act.

Id. at

573 (Moore, J., providing additional views).

3.

The

en

banc

court

of

appeals

held

Section

2(a)

facially unconstitutional under the First Amendment, vacated the

Boards decision, and remanded for further proceedings.
App., infra, 1a-47a.

See

The government had argued that Congress

may, consistent with the First Amendment, create an optional

program of federal trademark registration without opening that
program to racial slurs or other disparaging marks.
16a.

See id. at

The court rejected that characterization of the program,

deciding

that

penaliz[ing]

the

trademark

private

speech

registration
merely

because

disapproves of the message it conveys.

12a-19a.

scheme
[the

is

law

government]

Id. at 8a; see id. at

The court subjected the disparagement provision of

5
Section 2(a) to strict scrutiny and found it unconstitutional
because there is no substantial government interest justifying
the 2(a) bar on disparaging marks.

Id. at 15a, 26a-28a.

Judge OMalley (joined by Judge Wallach) filed a concurring

opinion suggesting that Section 2(a) is also unconstitutionally
vague.

App., infra, 28a.

dissented in part.
facially

Judge Dyk concurred in part and

He would have held that Section 2(a) is

constitutional

because

registration

is

government

benefit for commercial speech that reasonably may be denied to

disparaging

marks,

id.

at

35a-38a,

but

that

Section

2(a)

is

unconstitutional as applied to respondents mark because that

mark involves political speech, id. at 38a-39a. 1
dissented,

concluding

that

Section

2(a)

is

Judge Lourie
constitutional

because it does not prohibit any speech but instead permissibly

refuses to place the federal governments imprimatur on private
disparaging
dissented,

speech.
expressing

Id.
the

at

39a-40a.

view

that

Judge
Section

Reyna
2(a)

also
is

permissible regulation of commercial speech because it directly

advances the governments substantial interest in the orderly
flow of commerce.

Id. at 40a-44a.

Judge Dyk was joined by Judges Lourie and Reyna with

respect to his conclusion that Section 2(a) is facially
constitutional, but not with respect to his conclusion that
Section 2(a) is unconstitutional as applied.
See App., infra,
32a.

6
4.

The

court

of

appeals

Congress unconstitutional.

decision

declares

an

Act

of

The Solicitor General is examining

the legal and practical significance of the court of appeals

decision.

Additional time is needed for consultation with other

components
federal

of

the

agencies,

Department
and,

if

of

Justice

certiorari

and
is

with

authorized,

preparing and printing the petition.

Respectfully submitted.

DONALD B. VERRILLI, JR.

Solicitor General
Counsel of Record
MARCH 2016

interested
for