In Re Tam – Federal Circuit Orders En Banc Review Of Trademark Act's Ban Against Registration Of Disparaging Marks

The Slants is a Portland-based band composed of 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 to 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 Tam's invitation to address the 2009 Asian American Youth Leadership Conference in Portland had been rescinded due to concern that the name THE SLANTS was offensive and racist as supporting the Board's determination.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...