Washington, D.C./Portland, Oregon — The U.S. Court of Appeals for the Federal Court on Tuesday vacated a U.S. Patent and Trademark Office, Trademark Trial and Appeal Board holding that the rock band “The Slants” should be denied a trademark on the basis that its name is unregistrable under current law.
The court found that a provision in Section 2(a) of the Lanham Act, which bars the Patent and Trademark Office from registering scandalous, immoral, or disparaging marks, violated the First Amendment and was unconstitutional.
In the opinion for the court, Circuit Judge Kimberly Ann Moore stated that the government enacted Section 2(a) because it disapproves of messages conveyed by disparaging marks. As the First Amendment states, the government may not penalize private speech merely because it disapproves of the message it conveys, and this principle also holds when the penalty is less than a prohibition — such as denial of a patent over commercial speech.
“We helped expand free speech for under resourced people and communities,” said Simon Shiao Tam, founding member of The Slants, and the appellant in the case, in a comment on his Facebook page.
Tam called the decision “monumental in helping to strike down a sliver of systemic racism” and to shine a light on the Department of Justice in allowing the PTO to use race as a factor to deny rights.
The Slants is the name of an Asian-American dance-rock band name founded by Tam in 2006. The name was meant to “reclaim” and “take ownership” of Asian stereotypes, he said, and draws inspiration in songs that recall childhood slurs and mocking nursery rhymes. The album titles reflect the same, “The Yellow Album” and “Slanted Eyes, Slanted Hearts” to name two of the five released.
Tam said the band feels strongly that Asians should be proud of their cultural heritage, and not be offended by stereotypical descriptions. The band and its music contribute to the public forum on cultural, politics, race and society.
In 2011 Tam filed the instant application seeking to register the mark The Slants for “Entertainment in the nature of live performances by a musical band,” based on his use of the mark since 2006. The PTO refused to register the mark, finding it likely disparaging to “persons of Asian descent” and had a long history of being used to deride and mock a physical feature of people of Asian descent.
The PTO ruled that although Tam may have meant “reappropriate the disparaging term” it still presented a composite of persons of Asian descent who would find the term offensive. The PTO presented evidence of a 2009 Asian American Youth Leadership Conference in Portland, where organizers took Tam off the keynote speakers list after some attendees felt the name of the band was offensive and racist. It produced articles and blog posts discussing the offensive nature of the band’s name, and a brochure published by the Japanese American Citizens League describing the term “slant,” when used to refer to people of Asian descent, as a “derogatory term” that is “demeaning” and “cripples the spirit.”
Tam said the scope of the legal argument became more procedural and evidentiary in the appeal but it did not shift the meaning of the band’s name or its work for the sake of the case. He said in reply to people who target the band’s name regarding their own experiences.
“This case isn’t just about the band,” Tam said. “It’s about arts and activism. It’s about creating real world change. And we just took down a 70-year old racist law, which I’d say is more punk rock than almost anything else ever done by most so-called rockers.”
The Lanham Act in 1946 is a national system to register and protect trademarks used in interstate and foreign commerce. The PTO denied The Slants trademark under the provision of causing confusion, mistake, or intent to deceive, or deceptively misdescriptive.
The court majority opinion found that Tam explicitly selected his mark The Slants to create a dialogue on controversial political and social issues. The band name makes a statement about racial and ethnic identity with the intent to “shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this—indeed, because of it—Mr. Tam’s band name is expressive speech.”
Tam said there was misinformation and accusations regarding the decision in the form of “clickbait” articles that sidestepped the meaning of the decision to remove a law that suppressed the speech of marginalized groups. The articles instead re-framed the decision in the context of the NFL’s Washington Redskins trademark revocation case in a different district court.
In the court’s opinion it said the recent cancellation of the Washington Redskins professional football team trademark was based on a disparaging mark that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.”
While The Slants decision is certainly not hurting the Washington Redskins case, it doesn’t guarantee a win for them either, Tam said. The Slants is a trademark registration issue while the NFL team is dealing with a trademark cancellation.
“We fought in the CAFC (U.S. Court of Appeals for Federal Court), and they are in the 4th District, which isn’t bound by the decisions of our case,” Tam said.
Even if the Washington registrations remain cancelled, the team still keeps it trademark, he said.
“We should not let the fear of a football team regaining trademark registration justify the suppression of rights for other groups,” he said. “The Change the Name campaign is much bigger than a trademark registration.”
In this case the PTO refused to register Mr. Tam’s mark because it found the mark “disparaging” and “objectionable” to people of Asian descent. But the PTO has registered marks that refer positively to people of Asian descent.
The court noted the PTO registered Dykes On Bikes after the applicant showed the term was used with pride among the relevant population. The PTO allowed the registration of Squaw Valley in connection with skiing-related products, but not in connection with a different class of goods.
This form of regulation cannot reasonably be argued to be content neutral or viewpoint neutral, the court stated. The general principle is clear, the opinion stated, “Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content.”
The court sited a Minnesota Supreme Court decision striking down a City of Saint Paul “fighting words” ban that said the responsibility and obligation of diverse communities to confront virulent notions of racial supremacy in whatever form they appear in a manner of confrontation that cannot consist of selective limitations upon speech.
In a commercial sense, the denial of the trademark benefit creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging, the opinion added. The importance of the benefits of federal trademark registration explains the strength of the incentive to avoid marks that are vulnerable.
The court found the disparagement provision in this case to be unconstitutional, and recognized that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities.
“Even Mr. Tam, who seeks to reappropriate the term slants, may offend members of his community with his use of the mark,” the opinion stated. “But much the same can be (and has been) said of many decisions upholding First Amendment protection of speech that is hurtful or worse. Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate.”
In the dissenting opinions, Circuit Judge Jimmie V. Reyna said the majority held that Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Tam. She wrote that the refusal to register disparaging marks under the Lanham Act is an appropriate regulation that directly advances the government’s substantial interest in the orderly flow of commerce. The Constitution accords less protection to commercial speech than to other constitutionally safeguarded forms of expression and is justified in denying the trademark, she stated.
“Because I would uphold the constitutionality…I respectfully dissent. Trademarks are commercial speech. And precisely because trademarks are commercial speech, the government’s decision to grant or deny registration must be reviewed under an intermediate standard of scrutiny. Intermediate scrutiny is satisfied whenever the decision is narrowly tailored to directly advance a substantial government interest. When the commercial or political content of a trademark threatens the government’s substantial interest in the orderly flow of commerce, appropriate regulation may be justified.”
Also in the dissenting opinion, Circuit Judge Timothy Belcher Dyk stated that the content of Tam’s mark is so “indisputably expressive” that it cannot be regulated under the lesser standards applied to commercial speech. If the expressive content of the mark precludes regulation, on what authority may the government grant Tam the exclusive right to use this mark in commerce?
In 24 hours, Tam said he scanned more than 3,000 messages and read numerous stories.
“I’m crawling out to finally process it all,” he said.
Tam said he was disappointed to see so much misinterpretation of the court’s decision. The court did not lift the bar “offensive” marks, he said, which has always been allowed — and the what the court did was to remove the barrier on “disparaging” marks.
“In a practical sense, it won’t actually open the floodgate on hate speech since applicants still have to follow strict trademark laws and need legitimate products/services,” he said.