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.
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
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.
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
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
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.”
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
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.
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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