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By Blake Brittain
April 20 — The Trademark Trial and Appeal Board properly upheld a trademark examiner's decision not to register “The Slants” as a trademark for a musical group after finding it disparaging, regardless of the Asian-American band's intention to “take back” the racial slur, the U.S. Court of Appeals for the Federal Circuit ruled April 20.
The court also rejected the applicant's arguments that the Lanham Act's disparagement provision was unconstitutional under the First Amendment, that the provision was unconstitutionally vague, that the PTO had applied the law arbitrarily, and that the applicant was denied equal protection because the examiner's analysis was based on his band's ethnic identities as Asian-Americans.
Judge Kimberly Ann Moore, who wrote for the court, also filed “additional views” criticizing a 1981 decision by the U.S. Court of Customs and Patent Appeals that had found the Lanham Act's disparagement provision constitutional.
Moore said that In re McGinley was incorrect and outdated in light of later First Amendment-based decisions on commercial speech and the federal trademark registration regime's move away from taxpayer funding.
Simon Shiao Tam founded the Asian-American dance-rock band “The Slants” in Portland, Ore., in 2006.
Tam applied to register “The Slants” trademark with the PTO in 2010 and 2011, but was refused based on the Lanham Act's provision prohibiting the registration of marks “which may disparage” or bring into contempt persons, institutions, beliefs, or national symbols. 15 U.S.C. § 1052(a).
The Trademark Trial and Appeal Board affirmed the examiner’s refusal, determining that the mark was disparaging based on dictionary definitions, Tam’s own assertion that he chose “The Slants” name to “own” the stereotype, and evidence of objections by members of the Asian-American community to Tam’s use of the name.
The Federal Circuit found disparagement based on a two-part test from In re Geller, 751 F.3d 1355, 2014 BL 132368 (Fed. Cir. 2014), which requires a determination of the likely meaning of the mark, and whether that meaning may be disparaging to a substantial composite of the referenced group.
The court first found that the likely meaning of the mark referred to people of Asian descent.
The appeals court said that the evidence—which included a quote from Tam that the band name was based on the stereotype, a reference to the slur on the band's Wikipedia page, and the cancellation of a scheduled speech by Tam at an Asian-American conference because of the band name—indicated that the mark likely referred to people of Asian descent.
The court then found that the second part of the test was satisfied because “the definitions in evidence universally characterize the word ‘slant' as disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent.”
The court also rejected Tam's challenges to the constitutionality of Section 2(a).
The court said that Section 2(a) was constitutional under the First Amendment based on a 1981 decision of the U.S. Court of Customs and Patent Appeals, In re McGinley, 660 F.2d 481, 211 U.S.P.Q. 668 (C.C.P.A. 1981). That court held:
With respect to appellant's First Amendment rights, it is clear that the PTO's refusal to register appellant's mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant's First Amendment rights would not be abridged by the refusal to register his mark.
The court also denied Tam's arguments that Section 2(a) was unconstitutionally vague, that the PTO denied him due process by denying the application arbitrarily, and that the denial was based on the fact that he and his band are Asian-American, which he said would violate the Constitution's equal protection clause.
Judges Alan David Lourie and Kathleen M. O'Malley joined the court's opinion.
In a separate filing labeled “additional views,” Moore said that it was “time for this Court to revisit McGinley's holding on the constitutionality of § 2(a) of the Lanham Act.”
Moore said that McGinley was no longer correct, based on evolving jurisprudence and the fact that the PTO is no longer funded by taxpayers.
Moore said that trademarks are “unquestionably” protected “under Supreme Court commercial speech jurisprudence,” and that while many marks are used solely as source identifiers, Tam uses “The Slants” to “weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.”
Moore also said that Section 2(a) “severely burdens” commercial speech by denying the significant benefits of federal trademark registration on a content-specific basis.
“Section 2(a)'s content-based restrictions on registrability were adopted to reduce use of trademarks the government deemed unsuitable (such as those that disparage)—no doubt a chilling effect on speech,” Moore said.
Moore also said that the “unconstitutional conditions” doctrine—which prevents the government from denying benefits to applicants based on constitutionally protected speech—should apply to trademark registration, making Section 2(a) unconstitutional.
While that doctrine is tempered when Congress uses its constitutional spending power, the PTO is now completely funded by application fees—not by taxpayer funds as it was when McGinley was decided—and the doctrine should therefore apply, Moore said. She said that the fact that the Lanham Act derives from the Commerce Clause instead of the Spending Clause also supports the idea that trademark registration is not a government-funded benefit.
Moore also said that the government's content-based restrictions on trademark registration did not advance a substantial government interest as required under Cent. Hudson Gas & Elec. v. Pub. Serv. Comm'n, 447 US 557 (U.S. 1980).
“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,” Moore said.
“We have yet to be presented with any substantial government interests that would justify the PTO's refusal to register disparaging marks,” Moore said. “It is time to revisit the holding in McGinley in light of subsequent developments in the law and the trademark registration funding regime.”
Tam was represented by Ronald D. Coleman of Goetz Fitzpatrick PLLC, New York. The PTO was represented by Molly R. Solfen of the PTO's Office of the Solicitor, Alexandria, Va.
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