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Asian-American Rock Band's Attempt To Register 'The Slants' Rejected Under §2(a)

Wednesday, October 2, 2013

By Anandashankar Mazumdar  

Sept. 30 --Regardless of the intent of the use of the name “the Slants” to “take back” the ethnic slur by an Asian-American rock band, it was proper to refuse registration as a disparaging term under the federal trademark statute, the Trademark Trial and Appeal Board ruled Sept. 26 (In re Tam, T.T.A.B., No. 85472044, 9/26/13).

Affirming refusal of a trademark registration application, the board rejected the argument that the applicant was being refused registration solely on the basis of his race.

Portland Band Adopts Ethnic Slur as Name

Simon Shiao Tam a/k/a Simon Young is the founder of the Slants, an Asian-American dance-rock band founded in 2006 in Portland, Ore. In 2011, Tam filed an application with the Patent and Trademark Office to register the term “The Slants” as a trademark on the principal register for “entertainment in the nature of live performances by a musical band.”

A trademark examiner refused registration under Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), which prohibits registration of a mark that “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.”

Tam requested reconsideration, which was rejected. Tam then appealed.

Derogatory Meaning Clear in Context

Administrative Trademark Judge Karen Kuhlke first cited numerous definitions from dictionaries and other online sources that indicated that “slant” was a derogatory term for East Asians, originating in a stereotype of the appearance of the eyes of people from certain ethnic groups.

The board also cited to the entry for the Slants on Wikipedia, which indicated that the same originated in an ethnic slur. The Wikipedia entry also quoted Tam as saying: “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them.”

Furthermore, there were numerous articles in the record that noted that the term “slant” was derogatory.

The board rejected Tam's argument that registration had been illegitimately refused solely on the basis of his racial background. Tam noted that registrations existed incorporating the term “slant” for other goods and services.

However, according to the board, Section 2(a) requires an examination of the use of the relevant term in the context of the marketplace. The board said:

The musical group, in its advertising and on its website, promotes the “likely meaning” of the mark to be people of Asian descent by, for example, displaying the wording “THE SLANTS” next to a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image. In addition, applicant actively seeks to associate his services with this meaning as a way to embrace this slang meaning and to “own” the stereotype represented by THE SLANTS. That applicant, or even the entire band, may be willing to take on the disparaging term as a band name, in what may be considered an attempt not to disparage, but rather to wrest “ownership” of the term from those who might use it with the intent to disparage, and that some members of the referenced group may support applicant's use, does not meant that all members of the referenced group of persons share applicant's view.  

 

According to the board, Tam's argument amounted to his saying that because he is ethnically Asian, his intentional adoption of a disparaging term should not be interpreted as disparaging.

The board compared the situation to that in In re Heeb Media LLC, 89 U.S.P.Q.2d 1071 (T.T.A.B. 2008), in which the board refused registration of a trademark incorporating the disparaging term “Heeb.”

“Applicant cannot claim ownership and redefine the term without a use that acknowledges the meaning that must be overcome,” the board said. “However, it is very important to note that a finding that THE SLANTS is disparaging is not dependent on applicant's ethnicity, but on the circumstances related to his use of the term.”

The board thus concluded that the likely meaning of the term in context of its use in commerce was disparaging. Furthermore, the board determined that in the context of the entire Asian-American community--as opposed to just fans of the band--the term would be considered disparaging, regardless of Tam's intent in using it.

“The fact that applicant has good intentions underlying his use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable,” the board said.

Finally, the board emphasized that a refusal to register the term did not prevent Tam's continued use of it. Thus, Tam's free speech rights would not be infringed. The board thus affirmed the refusal to register under Section 2(a).

The board's opinion was joined by Administrative Trademark Judges Gerard F. Rogers and Jyll Taylor.

Tam was represented by Ronald D. Coleman of Goetz Fitzpatrick, New York. The PTO was represented by Mark Shiner, trademark examining attorney.

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