The Slants is a Portland-based band composed of musicians of Asian-American descent who characterize their genre as “Chinatown Dance Rock.” The band’s bassist, Simon Tam, filed a trademark application for THE SLANTS for “Entertainment, namely, live performances by a musical band.” The examining attorney refused registration on the basis that the mark THE SLANTS is disparaging to Asian-Americans, pursuant to 15 U.S.C. §1052(a) (“Section 2(a)” of the Trademark Act). Looking both to dictionary definitions and to evidence of the band’s own use of the mark, including the applicant’s contention that the band’s adoption of the name The Slants was “a way to reclaim a racial slur and to assert Asian pride,” the examiner found that “the evidence is overwhelming that applicant chose the mark fully aware of the connection to the racial slur.” The Trademark Trial and Appeal Board affirmed the refusal in April 2013.

On appeal to the U.S. Court of Appeals for the Federal Circuit, Tam contended that the Board erred in finding the mark THE SLANTS disparaging, and also challenged the constitutionality of Section 2(a).

Section 2(a) permits refusal of registration of a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” A two-part test determines whether a mark may be disparaging: (1) determining the likely meaning of the matter in question, taking into account both dictionary definitions and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) whether the meaning may be disparaging to a substantial composite of the referenced group.

As to the first prong, the Federal Circuit agreed with the Board’s determination that the evidence before it indicated that the mark THE SLANTS “likely refers to people of Asian descent,” based both on statements made by Tam and the fact that the band’s website featured the mark THE SLANTS “against a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image.” The Federal Circuit also cited the fact that Mr. Tam’s invitation to address the 2009 Asian American Youth Leadership Conference in Portland had been rescinded due to concern that the name THE SLANTS was offensive and racist as supporting the Board’s determination. The court also found that substantial evidence supported the Board’s determination as to the second prong, that THE SLANTS is likely offensive to a substantial composite of people of Asian descent.

Turning to the constitutionality of Section 2(a), the Federal Circuit’s opinion first observed that the First Amendment is not implicated by a refusal to register a mark, since an applicant may use a mark regardless of whether the USPTO registers it, per In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). The court also rejected Tam’s due process argument based on the USPTO’s registration of other arguably disparaging marks as well as other marks containing “slant” or “slants,” noting that Tam had a full and fair opportunity to prosecute his application and appeal the examining attorney’s refusal to the Board. Finally, the court was not persuaded by Tam’s equal protection argument, which asserted that the rejection was based on his and his bandmates’ identities as persons of Asian descent. The court distinguished the rejection as being based on the manner of the band’s use, rather than the identities of the band members themselves. Because there were nondiscriminatory reasons for denying the application, the court determined that the refusal could be affirmed.

Although the Federal Circuit’s opinion was written by Judge Kimberly Moore for a unanimous panel, Judge Moore also contributed an additional 23 pages of “additional views” calling for the en bancFederal Circuit to “revisit McGinley’s holding on the constitutionality of § 2(a) of the Lanham Act.” Judge Moore noted that the applicant’s stated purpose of “reclaiming” and “taking ownership of” the racial slur falls within “the heartland of speech protected by the First Amendment.” Furthermore, notwithstanding McGinley’s rule that refusal to register does not implicate use, Judge Moore observed that registration “is significant” and confers important legal rights and benefits on trademark owners who register their marks.

The Federal Circuit heeded Judge Moore’s call for en banc review of the panel’s decision in In re Tam just a week after the panel’s opinion issued, indicating a strong possibility that the full court will find Section 2(a) unconstitutional in addressing the following question: “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?” Judge Moore’s “additional views” provide a road map for the full court to do so.

Highlighted in Judge Moore’s comments was the tension between the “unconstitutional conditions” (UC) doctrine that has developed in the wake of McGinley and the manner in which the government may acceptably limit funding. According to UC doctrine, a government benefit cannot be denied based on a recipient’s exercise of protected speech, which, as Judge Moore observes, likely includes trademarks under the umbrella of commercial speech. However, the Spending Clause of the Constitution grants broad congressional power to spend for the “general Welfare” and set the outer limits of government benefit programs. Thus, two important queries emerge for those challenging the constitutionality of Section 2(a): whether trademarks are indeed protected speech as per UC doctrine, and whether trademark registration is authorized pursuant to the Spending Clause. Judge Moore points out that commercial speech has enjoyed First Amendment protection ever sinceBigelow v. Virginia, 421 U.S. 809 (1975) and Central Hudson Gas & Electric Corporation v. Public Service Commission of New York, 447 U.S. at 566 (1980) established the protected nature of commercial speech and laid out the standard for determining the constitutionality of commercial speech restrictions, respectively. Additionally, Judge Moore suggests that trademark registration falls outside the Spending Clause, as it is a regulatory system, not a subsidy scheme, and does not involve the federal treasury.

Section 2(a) does not prohibit marks that refer positively to particular groups or institutions.  Rather, only negative marks are singled out for analysis, raising potential content-based speech restriction issues. Section 2(a)’s limitations inherently focus on politically and socially charged commentary, which Judge Moore characterizes as residing “within the heartland of speech protected by the First Amendment.” Mr. Tam, for example, sought through his mark THE SLANTS to “reclaim a racial slur” and encourage dialogue in the Asian community. His efforts are not unlike those on the part of the registrants in In re Heeb Media, LLC, where the mark HEEB was sought for a line of clothing and rejected by TTAB as disparaging to Jewish individuals. 89 USPQ 2d 1071 (TTAB 2008). Although the mark was intended as a “symbol of pride and progressive identity among today’s Jews,” TTAB concluded that this term is divisive within the Jewish community and, at best, “in transition” between the realms of “offensive” and “acceptable.” These decisions beg the question of when it isappropriate, at least in the eyes of the government, for minority groups to reclaim derogatory terms and reap the benefits of trademark protection that other, less controversial marks enjoy. Section 2(a) has also been implemented in a variety of cases where nonminority members seek to capitalize on phrases targeting a specific minority group. For example, last May the Federal Circuit in In re Geller rejected the mark STOP THE ISLAMISATION OF AMERICA “[b]ecause ‘the majority of Muslims are not terrorists and are offended by being associated as such.’” 751 F.3d 1355, 1357 (Fed. Cir. 2014).

Perhaps the most publicized recent dispute invoking Section 2(a) is that of the Washington Redskins football team, which saw six of its trademark registrations canceled a year ago after being deemed disparaging to Native Americans.  Pro Football’s appeal of the cancellation decision will be heard in the Eastern District of Virginia on June 23, 2015. Depending on the outcome of In re Tam, the controversial mark could be reinstated notwithstanding decisions made long ago in the court of public opinion.

The Federal Circuit’s taking up en banc review of In re Tam signals the court’s willingness to overturnMcGinley, which may result in a flood of successful trademark registrations that would not have been possible otherwise. Successful registrations within the past decade like the San Francisco Women’s Motorcycle Contingent’s DYKES ON BIKES mark, which was initially rejected as “disparaging to lesbians” and then reconsidered and permitted to proceed to registration, also seem to signal a growing acceptance of once-taboo marks. Though a rejection of McGinley may open the door to disparaging marks, the PTO will also be met with registrants seeking to implement derogatory slurs in the interest of positive social change. Equilibrium may be reached after all.

In re Tam could potentially flip the last 34 years of Section 2(a) litigation on its head, ending an era of reliance on McGinley – a decision made, as Judge Moore put it, “without citation to any legal authority in just a few sentences.” For future trademark applicants, a decision overturning McGinleycould mean the registrability of a wider variety of marks – “politically correct” or otherwise.

Jessica Watkins