Tam filed an application to register the mark THE SLANTS as the name of his Asian-American dance rock band. The Examiner rejected the application under section 2(a) of the Lanham Act, which allows the refusal of “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.” The TTAB affirmed the Examiner’s refusal.
On appeal, the Federal Circuit affirmed and applied the two-part test of In re Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014), which determines (1) the likely meaning of the matter in question, and then (2) whether that meaning may be disparaging to a substantial composite of an identifiable group. The Federal Circuit found persuasive that, in published interviews, appellant stated, “I was trying to think of things that people associate with Asians. Obviously one of the first things people say is that we have slanted eyes.” It further noted other similar published remarks by appellant as well as the refusal of certain organizations to deal with the band, citing their objection to the “offensive and racist” name. This same evidence was used to determine that the mark was disparaging to an identifiable group.
Appellant further asserted the rejection was unconstitutional and violated his First Amendment rights of freedom of speech because it conditioned a benefit on relinquishment of speech. In addressing the First Amendment argument, the Federal Circuit applied the precedent of In re McGinley, 660 F.2d 481, 484 (C.C.P.A.), which held that rejecting a mark does not abridge the freedom of speech. Nevertheless, Judge Moore included an opinion which outlined the application of the First Amendment to Freedom of speech and argued that McGinley should be revisited in light of subsequent Supreme Court First Amendment rulings.
In re Simon Shiao Tam, Appeal No. 2014-1203 (Fed. Cir. April 20, 2015).