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May 31, 2015 Practice Points

En Banc Constitutionality of Trademark Act's Ban Against Registration of Disparaging Marks to Be Reviewed

Do minorities have trademark rights to reclaim racial slurs?

By Lesley McCall Grossberg

The Slants are a Portland-based band comprising 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 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 twenty-three 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. Judge Moore's "additional views" provide a roadmap for the full court to do so.

Keywords: intellectual property, litigation, racial slur, The Slants, trademark, Trademark Trial and Appeal Board, discrimination

Lesley McCall Grossberg is with BakerHostetler in Philadelphia, Pennsylvania.

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Lesley McCall Grossberg – April 30, 2015