Are First Amendment rights violated by the PTO’s refusal to register a “disparaging” trademark?

The US Court of Appeals for the Federal Circuit is wrestling with this question. On April 20th, a three-judge panel ruled that refusal to register a service mark on the grounds that it is disparaging does not affect the applicant’s right to use the mark and, therefore, the refusal to register does not violate the First Amendment. However, just one week after this decision, the Federal Circuit, on its own motion, decided to vacate the prior decision and reinstate the appeal for consideration by all the judges of the Court.

As a bit of background, The Slants is a Portland, Oregon-based band, which plays music it calls “Chinatown Dance Rock.” The band applied for the service mark “The Slants” for services described as: “Entertainment in the nature of live performances by a musical band.” It was rejected on the grounds that the mark disparages Asians. The band appealed and argued that the US Patent and Trademark Office (“PTO”) violated the First Amendment in acting as a “referee of political correctness.” Under 15 U.S.C. § 1052(a) (§ 2(a)) of the Lanham Act, the PTO may refuse to register immoral, scandalous, or disparaging marks.

The PTO refused to register THE SLANTS stating:

“The following two factors must be considered when determining whether matter may be disparaging under Trademark Act Section 2(a):

(1)  What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods and/or services, and the manner in which the mark is used in the marketplace in connection with the goods and/or services; and

(2)  If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.”

The Trademark Trial and Appeal Board affirmed the PTO examining attorney’s refusal to register the mark. To support this conclusion, the Board pointed to the band’s own website, which displayed the mark next to “a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image,” and to a statement by Mr. Tam that he selected the mark in order to “own” the stereotype it represents. The Board also found that the mark is disparaging to a substantial component of people of Asian descent because “[t]he dictionary definitions, reference works, and all other evidence unanimously categorize the word ‘slant,’ when meaning a person of Asian descent, as disparaging,” and because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam’s use of the word “slant.”

In the Federal Circuit, Mr. Tam, the “front man” for the band, argued that the Lanham Act’s restrictions on disparaging trademarks are unconstitutional under the First Amendment because § 2(a) conditions a benefit -trademark registration- on the relinquishment of speech. The Court initially rejected the First Amendment argument, citing precedent holding that the refusal to register a trademark “does not proscribe any conduct or suppress any form of expression because it does not affect the applicant’s right to use the mark in question.” However, with the reinstatement of the appeal, the full Court will now address the following question: “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?” 

Sound familiar? The case has parallels to the Washington Redskins trademark cancellation. Native Americans successfully convinced the PTO in June 2014 to cancel the NFL team’s trademark because the name disparages Native Americans. The team is appealing the cancellation and one of its arguments is that the disparagement provision, § 2(a), violates the First Amendment. Due to the similarity of the legal issues, the Federal Circuit’s opinion over “The Slants” trademark application will likely influence the Redskins’ appeal.

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