Portrait of Asian-American band The Slants (L-R: Joe X Jiang, Ken Shima, Tyler Chen, Simon "Young" Tam, Joe X Jiang) in Old Town Chinatown, Portland, Oregon, USA on 21st August 2015. (Photo by: Anthony Pidgeon/Redferns)

Portrait of Asian-American band The Slants (L-R: Joe X Jiang, Ken Shima, Tyler Chen, Simon “Young” Tam, Joe X Jiang) in Old Town Chinatown, Portland, Oregon, USA on 21st August 2015. (Photo by: Anthony Pidgeon/Redferns)

By Eli Daniels

 

Simon Tam is the lead singer of a pop-rock band called “The Slants.”[1] Tam and the group from Portland, Oregon, whose members are all Asian American, decided on the name THE SLANTS because they wanted to reclaim and take ownership of Asian stereotypes.[2] In 2011, he filed an application with the Patent and Trademark Office (“PTO”) seeking to federally register THE SLANTS as a trademark.[3] However, an examining PTO attorney denied the application, deciding that the mark is disparaging to persons of Asian ancestry.[4] The PTO’s Trademark Trial and Appeal Board affirmed, concluding that “it is abundantly clear from the record not only that THE SLANTS would have the likely meaning of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances.”[5] On appeal, The United States Court of Appeals, Federal Circuit affirmed.[6] The court found that there was substantial evidence to support the Board’s conclusion that the mark THE SLANTS refers to people of Asian decent and that it is likely to be found offensive to a considerable amount of people of Asian decent.[7]

However, in a separate opinion, Judge Moore wrote for the the United States Court of Appeals, Federal Circuit, urging the court to revisit its previous decision on the constitutionality of § 2(a) of the Lanham Act.[8] Accordingly, the en banc court of appeals held that Section 1052(a)’s disparagement provision is facially unconstitutional.[9] The Federal Circuit ruled that it violates the First Amendment right to free speech to reject a mark based on disapproval of its content.[10] The Court reasoned that “the First Amendment protects even hurtful speech.”[11]

The PTO petitioned for a writ of certiorari and the Supreme Court has recently decided to grant the petition and hear the case.[12] The Supreme Court will be addressing the question of whether the disparagement provision of the Lanham Act 15 U.S.C. 1052(a) is facially invalid under the Free Speech clause of the First Amendment.[13] The question presented is an important one. The 70-year-old provision is a significant part of the federal trademark registration system and the PTO has consistently applied these provisions to deny registration of disparaging marks.[14] However, the Federal Circuit invalidated Section 1052(a)’s disparagement provision on its face, so it cannot be used in any event, even to prohibit registration of racial labels.[15] Since the Federal Circuit’s decision to preclude the PTO from enforcing the disparagement provision, the PTO has suspended action on trademark applications that would normally be refused under the disparagement provision.[16] Currently, this has caused a significant delay in the federal trademark system and delayed the review of thousands of trademark applications from businesses because they raise a question of disparagement.[17] Additionally, the Federal Circuit’s decision has also cast uncertainty on the validity of other provisions of Section 1052(a), such as the bar against registration of immoral or scandalous matter.[18] The court acknowledged that, under its First Amendment theory, other portions of § 2 may constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks.[19]

Furthermore, the Supreme Court’s decision will impact what businesses can register as a trademark for the future. This is shown now by the Washington Redskins eager interest in this case. In the case pending before the Fourth Circuit, the Washington Redskins are challenging the PTO’s decision to revoke the team’s trademark of its name on the basis that the mark is disparaging to Native Americans.[20] The Redskins submitted an amicus brief pleading with the Court to hear its case together with Tam’s without waiting for the Fourth Circuit to rule.[21] However, the Court denied the request, and the Redskins are forced to simply wait and watch, along with the rest of us.[22]

 

 

[1] Teta Alim, Why this Band is Fighting for its Right to Have an ‘Offensive’ Name (Sept. 18 2015), https://bandwidth.wamu.org/why-this-band-is-fighting-for-its-right-to-have-an-offensive-name/.

[2] Id.

[3] In Re Tam, 808 F.3d 1321(Fed. Cir. 2015).

[4] Id.                                                                                     

[5] Id. at 1322.

[6] Id.

[7] Id.

[8] Lee v. Tam, No. 14-1203 (Fed. Cir. 2015), cert. granted, (U.S. Sept. 29, 2016) (No. 15-1293).

[9] Dennis Crouch, Lee v. Tam: The Supreme Court Takes on the Slants (Sept. 29, 2016), https://patentlyo.com/patent/2016/09/supreme-takes-slants.html.

[10] Id.

[11] In Re Tam, 808 F.3d 1321, 1328 (Fed. Cir. 2015).

[12] Dennis Crouch, Lee v. Tam: The Supreme Court Takes on the Slants (Sept. 29, 2016), https://patentlyo.com/patent/2016/09/supreme-takes-slants.html.

[13] Id.

[14] Lee v. Tam, No. 14-1203 (Fed. Cir. 2015), cert. granted, (U.S. Sept. 29, 2016) (No. 15-1293).

[15] Id.

[16] Id.

[17] Id.

[18] Id.

[19] In Re Tam, 808 F.3d 1321, 1364 (Fed. Cir. 2015).

[20] Evan Mix, Supreme Court and the Lanham Act: Lee v. Tam (Oct. 10, 2016), https://www.natlawreview.com/article/supreme-court-and-lanham-act-lee-v-tam.

[21] Id.

[22] Id.

Share this post