The US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s decision affirming an examining attorney’s decision to refuse registration of the mark THE SLANTS as disparaging.

However, Circuit Court Judge Kimberly Ann Moore presented a lengthy argument that the provision barring registration violated Constitutional protections of free speech, suggesting that she would have ruled otherwise if not for controlling precedent.

The Rock Band

Simon Shiao Tam is the front man for an Asian-American dance rock band that calls itself “The Slants.” Tam filed two applications to register the band’s name as a federal trademark.

In both cases, the examining attorney found the proposed mark to be disparaging to people of Asian descent.

15 U.S.C. § 1052(a) provides that no trademark may be registered if it may

disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

The best-known recent case on disparagement involved the Washington Redskins, as we discussed here.

The Board found that the proposed mark “is disparaging to a substantial component of people of Asian descent” and that “there was evidence of individuals and groups in the Asian community objecting to Mr. Tam’s use of the word ‘slant.’”

Tam stated that he picked the mark “in order to ‘own’ the stereotype it represents.” The band’s Wikipedia page states that its name is “derived from an ethnic slur for Asians.”

Trademarks as Free Speech

In a document entitled “additional views,” Judge Moore suggested that it is time for the Federal Circuit to revisit the constitutionality of 15 U.S.C. § 1052(a), noting that “it is unquestionably true that trademarks are protected speech under Supreme Court commercial speech jurisprudence.”

She noted:

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…. While the government may argue that it has an interest in discouraging the use of disparaging marks that may be offensive to persons, institutions, beliefs, or national symbols, this is not a legitimate government interest.

For the time being, however, the USPTO will continue to refuse registration of trademarks viewed as disparaging.

The case is In re: Simon Shiao Tam.