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A Different Slant On The Slants’ Trademark Dispute

Posted on Jan 25, 2016 in Articles

This article originally appeared in Law360 on January 22, 2016.

Somehow a routine trademark application turned into something much more, as arguments exploded over racism, ethnicity and the constitutional right to freedom of speech. The Court of Appeals for the Federal Circuit ultimately struck down a 70-year-old trademark statute as violating the First Amendment.[1] This story, however, is far from finished.

Simon Shiao Tam is the “front man” for an Asian-American dance rock band called The Slants. The Federal Circuit explained:

Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes … The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes … and its albums include “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” The band “feel[s] strongly that Asians should be proud of their cultural heritage, and not be offended by stereotypical descriptions.

In 2011, Tam filed a trademark registration application to register his band name, “The Slants.” In the United States, common law provides a trademark owner with certain rights, but a federal registration gives a trademark owner substantial benefits. With a registration, for example, a trademark owner has nationwide rights to sue for infringement; without a registration, trademark rights can only be enforced in the geographic area where the trademark is used. As another example, a federal registration gives a trademark registrant the ability to request the U.S. Customs and Border Patrol to seize imported goods that infringe the registrant’s trademark.

Trademark applications go through a strict examination process within the U.S. Patent and Trademark Office. Sometimes an application is approved as filed. Other times, an application is rejected, most often if the trademark creates what is called a “likelihood of confusion” with another trademark.

Tam’s application was rejected — but not on a typical basis. Relying on a somewhat infrequently cited statute, the trademark examining attorney refused Tam’s application because his trademark was “disparaging” (i.e., derogatory and/or offensive). In particular, the examining attorney explained that the term “slants” had “a long history of being used to deride and mock a physical feature” of people of Asian descent. To support his argument, the examining attorney cited numerous examples of the allegedly offensive nature of the trademark. The fourth definition of “slant” from the American Heritage Dictionary was relied upon (“Offensive slang used as a disparaging term for a person of East Asian birth or ancestry”). “The Color of Words: An Encyclopaedic Dictionary of Ethnic Bias in the United States” was cited. Even Miley Cyrus played a role — a photograph of her appears in the record of this application — pulling her face sideways from the outer corners of her eyes in order to narrow her eyelids. The examining attorney concluded that many people of Asian descent would be offended by Tam’s trademark. Therefore, Tam’s application to register the mark “The Slants” was refused.

The trouble with this fact pattern is that Tam wasn’t applying for a trademark for an “Asian rock band.” His trademark application was for “Entertainment in the nature of live performances by a musical band.” Tam responded to the refusal to register by arguing that the term “slants” is not inherently offensive and the term can have many definitions. For example, the first definition provided by the American Heritage Dictionary is “A line, plane, course, or direction that is other than perpendicular or horizontal; a slope.” Tam argued that there was no basis for a word associated with “a slope” to be disparaging in the context of a musical band. The examining attorney’s response is what probably sent this dispute on its wild ride:

Here, the evidence is uncontested that applicant [Tam] is a founding member of a band (The Slants) that is self described as being composed of members of Asian descent …Thus, the association of the term SLANTS with those of Asian descent is evidenced by how Applicant uses the mark — as the name of an all Asian-American band.

In other words, because Tam was Asian, using the term “slants” for his band name was offensive (according to the examining attorney). If, however, Tam wasn’t Asian, might it then be inferred that calling his band The Slants would be OK? To put it another way, because Tam was of Asian descent, his trademark application was refused.

Racism?

A refusal on the part of the PTO based on Tam’s ethnicity?

At least Tam thought so, and he certainly argued the point. He filed an appeal with the Trademark Trial and Appeal Board and argued as follows:

By the Examining Attorney’s logic, the same exact application submitted by a non-Asian would be entitled to registration. THE SLANTS, the PTO admits, is not inherently offensive … THE SLANTS could be registered as a trademark — just not by Asians. It should go without saying that the law does not support refusal of registration based on the ethnic descent of an applicant…

Tam lost his appeal at the TTAB, and then filed another appeal, this time at the Court of Appeals of the Federal Circuit. A number of his arguments were based on the nature of the evidence relied on by the examining attorney in refusing his application. One argument, though, stands out:

This appeal concerns … the express use of a constitutionally suspect race-based criterion — i.e., the applicant’s ethnicity — to bar him from registering a mark deemed derogatory … coupled with a misrepresentation of the evidentiary record … that obfuscates the [trademark] Examiner’s admission that he did just that.

The Federal Circuit disagreed with Tam’s evidence-based arguments.[2] They also disagreed with his argument that his trademark registration was denied based on race. They quoted the response that the TTAB asserted in response to Tam’s race-based accusations:

An application by a band comprised of non-Asian-Americans called THE SLANTS that displayed the mark next to the imagery used by applicant … would also be subject to a refusal [under the trademark laws that prohibit disparaging trademarks]

In this manner, both the TTAB and the court of appeals concluded that Tam’s registration refusal had nothing to do with race. Both the TTAB and the court of appeals explained that Tam was using his trademark on his website next to “a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image.” Thus, they asserted, it was on the basis of his use of the trademark that the trademark was deemed to be disparaging.

Personally, I find this entire line of reasoning troubling. What if I, someone who is not of Asian descent, were to apply to register the trademark “The Slants,” and what if my website features Asian imagery? I understand the court’s point that the imagery on the website has a characteristically Asian theme, but I question how that would be disparaging if my “non-Asian” facial features appear. So, I think the Federal Circuit’s response is problematic.

The other issues raised by Tam before the Federal Circuit related to his constitutional rights — specifically freedom of speech, due process and equal protection. Citing legal precedent, the court concluded that the TTAB’s decision, while denying a registration, did not prevent Tam from otherwise using the mark and calling his band The Slants (albeit without the advantages that a trademark registration provides). Since Tam was permitted to use his mark, it was concluded that his freedom of speech rights were not violated. The Federal Circuit also decided that neither a due process violation nor a violation of equal protection had occurred. Therefore, it was concluded, Tam’s constitutional rights were not violated.

The case then took an odd turn when, along with their decision, the Federal Circuit issued a supplemental opinion about Tam’s freedom of speech rights. Although they had ruled, based on legal precedent, that Tam’s freedom of speech rights had not been violated by the PTO, they wrote in their supplemental opinion that it was timely for that legal precedent to be re-evaluated. A further hearing was convened in which all of the judges of the Federal Circuit overruled the precedent. Trademarks, the court explained serve two functions: (1) to identify the source of a product or service; and (2) as a form of expression. The PTO’s refusal to grant the registration on the basis of disparagement prevented Tam’s expression of the message he was trying to convey with his trademark. Therefore, the court concluded, Tam’s First Amendment freedom of speech rights were violated, and Tam was entitled to his registration.

Whether Tam’s case will go to the U.S. Supreme Court remains to be seen. The PTO may ask the U.S. Supreme Court to rule on Tam’s case, but the U.S. Supreme Court may refuse. The Washington Redskins are litigating the cancellation of their trademark registration for their “Redskins” mark, and the statutory basis of the cancellation is the same as the basis for initially refusing to register Tam’s trademark. The Redskins’ case, however, is being decided by a different federal appeals court than the Federal Circuit. Therefore, the U.S. Supreme Court may want to hear Tam’s case to ensure that the law will be applied uniformly to Tam and to the Redskins.

While Tam’s case was ultimately decided on the basis of the First Amendment, Tam’s initial argument, that the PTO made their decision based on Tam’s ethnicity, never made it past the first Federal Circuit decision. On The Slants’ website, Tam explains how the Redskins case and his case are different, including the fact that the Redskins’ case has nothing to do with the ethnic origin of the people using the “Redskins” trademark. Tam raises a good point, and it is unfortunate (perhaps “unfortunate” is not a strong enough word) that his message got lost. Tam states that his goal is to create positive social change. Perhaps by striking down the trademark laws on “disparagement” Tam will be able to achieve his goal — just not in the manner he intended.

– By Lawrence E. Ashery

 

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