Author: Whitney Devin Cooke
On April 20, 2015, the Federal Circuit affirmed the TTAB’s section 2(a) refusal to register the mark THE SLANTS. Applicant Simon Shiao Tam is the “front man” of a Asian-American dance band called The Slants. Following the PTO’s refusal to register an earlier application for the identical mark on the ground that the mark THE SLANTS it is disparaging to persons of Asian descent, Tam filed a second application covering nearly the identical services. The examining attorney again found the mark THE SLANTS to be disparaging, citing materials gathered in response to the PTO’s refusal of the earlier application. In response to Tam’s appeal to the final refusal, the TTAB ruled that it was “abundantly clear” from the evidence, namely, Asian-inspired imagery on the band’s website, and a statement from Tam that he intended the band’s name to “own” an Asian stereotype, that THE SLANTS mark would be perceived as referring to persons of Asian descent.
On appeal to the Federal Circuit, Tam argued that the Board erred in affirming the section 2(a) refusal of THE SLANTS mark both because the word “slants” has multiple meanings, not all of them disparaging and because the Examining Attorney’s reliance on evidence from the prior application file was improper. In its decision, the three-judge panel unanimously rejected these arguments, finding no error in the examining attorney’s reliance on evidence from the earlier application, and “no dispute” that the term “slants” has a number of meanings, one of which refers to persons of Asian descent. The panel found Tam’s reference to alternative meanings of the term “slant” unpersuasive, concluding that the mere existence of innocuous meanings does not foreclose the possibility that a term can also be used in a disparaging manner. Citing “substantial evidence,” including quotations from Tam, Asian-inspired images from the band’s website, as well as news articles and blog posts discussing the offensive nature of the term “slant,” the panel affirmed the Board’s determination that the mark is likely offensive to a substantial composite of people of Asian descent.
The Federal Circuit similarly rejected Tam’s constitutional challenges to the Board’s decision. Specifically, Tam argued that section 2(a) of the Lanham Act is an unconstitutional restriction on First Amendment-protected speech, that section 2(a) is unconstitutionally vague, and that the PTO’s disparagement analysis violated the Due Process and Equal Protection clauses. Citing longstanding Federal Circuit precedent, the panel held that the PTO’s refusal to register a trademark does not affect an applicant’s right to use the mark and thus does not abridge an applicant’s First Amendment rights. In response to Tam’s vagueness claim, the panel found that the two-part disparagement test of section 2(a) is “sufficiently precise” to allow the PTO to apply the standard fairly. Regarding Tam’s due process claim, the panel rejected Tam’s allegation, finding that the existence of registered trademarks containing disparaging terms did not indicate unfair application of section 2(a) but instead confirmed the PTO’s practice of evaluating each application on its own merits. Finally, the panel rejected Tam’s argument that the examining attorney denied his rights under the Equal Protection clause by “hinging” his disparagement analysis on his (and his bandmates’) ethnic identity. Instead, the panel held, the examining attorney rightfully denied Tam registration because he used the mark in a disparaging manner, not on account of his race.
In an addendum to her opinion, Judge Moore suggested that the Federal Circuit should reconsider the First Amendment implications of the PTO’s speech suppressing power, noting that “with their lyrics, performances, and band name, Mr. Tam and The Slants weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.
On April 27, 2015, the Federal Circuit vacated this decision and the case will be heard en banc.
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