Federal Circuit pulls the plug on ‘disparaging’ trademark application

A US appeals court has affirmed a decision from the US Patent and Trademark Office (USPTO) that rejected a trademark application for the phrase ‘The Slants’ on the grounds that it was disparaging.

Simon Shiao Tam, founder of a rock band called The Slants, had appealed against the USPTO’s decision at the US Court of Appeals for the Federal Circuit.

But, in a ruling published on Monday (April 20), the court upheld the USPTO’s decision.

Tam first applied to trademark the term ‘The Slants’ in 2010, to cover musical entertainment services, but the USPTO rejected the application because it said the term, a slang word for Asian people, may cause offence to people of Asian heritage.

Tam re-applied the following year only to find the application being rejected again for the same reason.

In April 2014, he filed an appeal against the decision at the federal circuit.

During arguments, Tam claimed that the rejection of such a trademark was a violation of his First Amendment right, which protects free speech, and that what constitutes “disparagement” is not “clearly defined”.

Tam referred to the granting of the ‘Dykes on bikes’ trademark to the San Francisco Women’s Motorcycle Contingent as an example of when the notion of disparagement is “arbitrarily” applied.

He said he wanted to take ownership of the phrase and “take on those stereotypes that people have about us [Asian people], like the slanted eyes, and own them”.

But the federal circuit’s three judges stated that the USPTO did not violate his First Amendment right because the band can still operate under the name The Slants.

Last year, National Football League team the Washington Redskins argued that by revoking six of its trademarks containing variations of the term ‘redskin’, the USPTO’s Trademark Trial and Appeal Board had violated its First Amendment right.

The football team has found support for its argument from the American Civil Liberties Union (ACLU), an organisation set up to protect the civil liberties of US citizens.

In March, the ACLU said: “Under the First Amendment, viewpoint-based regulation of private speech is never acceptable, regardless of the controversy of the viewpoint.”

The Washington Redskins has since appealed against the USPTO’s decision.

But Tam is keen to distinguish The Slants’ trademark dispute from that of the football team.

In June, Tam wrote on the band’s website that the cases were not “analogous”.

He wrote: “Redskins have a long history of oppression; the football team treats the people as mascots. On the other hand, Asian American activists have been using ‘slant’ to present a bold portrayal of our [Asian] culture for decades.”