quired secondary meaning. For example, SHARP for televisions was initially held to be descriptive but has now acquired secondary meaning and is accorded trademark protection. Next, marks can also be suggestive if they merely imply something about the good or ser- vice. These marks do not require secondary meaning to be protected. For example, Jaguar implies speed, but does not immedi- ately indicate that it is the name of an automobile manufacturer and its line of cars. Next, a mark can be fanciful if it is completely made up. For example, EXXON® has no meaning and is a made up word that now denotes an oil and gas corporation. Fanciful marks are the easiest for which to obtain trademark protection. Finally, marks can be arbitrary if they have a well-known meaning but one that is completely different to the source and its products. For example, Ap- ple® is a word that everyone knows describes a fruit. But Apple, Inc. has a trademark of Ap- ple® for computers and electronics. Why Register a Trademark? So now that we have briefly looked into the var- ious kinds of trademarks, let’s discuss why reg- ister the trademarks. First, trademarks are im- portant to a business and its communication with its customers. When customers look at a trademark, they immediately know with which company they are dealing, what is the compa- ny’s reputation, and the quality of the compa- ny’s goods and services. People make their buy- ing decisions based on such factors. Thus, trademarks can be used as an effective market- ing tool. Second, trademarks can be used to pro- tect a company, its reputation, and goods and services. Although trademarks can be protected by state law, trademark registration with the USPTO is beneficial. By registering a trade- mark, one can ensure that the mark is protect- ed under federal law across the country, which includes with it a notice to the public of the reg- istrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the (Continued from page 5) exclusive right to use the mark on or in con- nection with the goods or services set forth in the registration. This also allows for ef- fective combating against the knock-off in- dustry by taking legal action against them. Therefore, by registering a trademark, one can ensure that a competitor does not use a similar trademark for their goods and ser- vices. Finally, much like other forms of in- tellectual property, trademarks facilitate healthy competition for the benefit of con- sumer and companies by creating a need for ideas and a barometer for standards of goods and services. Who Sued Whom and Why? So now that we know the benefits of trademark registration, let’s discuss why this litigation even ensued. Si- mon Tam, the frontman of an Asian- American rock band named The Slants, applied to trademark the name of the band, specifically the word — Slants. According to him, he named his band The Slants in order to reclaim and “take ownership” of Asian stereotypes. The USPTO refused to register the band’s name because the Lanham Act4 forbade register- ing trademarks that are likely to disparage people or groups.5 Tam brought an action against the USPTO arguing among other things that by denying the registration of his band’s name, it violated his First Amendment rights. The case eventually ended up in the Supreme Court of the Unit- ed States. Supreme Court’s Analysis On June 19, 2017, the Supreme Court in Matal v. Tam, upheld the Federal Circuit’s en banc decision and rejected all three of the Government’s arguments that: (1) trademarks were government speech, not private speech, (2) trademark registration was a form of government subsidy, and (3) the constitutionality of the disparagement clause should be tested under a new govern- ment-program doctrine. The Court emphasized the First Amend- ment’s bedrock principle that speech cannot (Continued on page 13) Page 12 FBA/OC Supreme Court Slants in Favor of the First Amendment “[H]e named his band The Slants in order to reclaim and ‘take ownership’ of Asian stereotypes.”