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6 August 2015Trademarks

The Slants urges Federal Circuit to overturn trademark rejection

Lawyers representing rock band The Slants have urged the US Court of Appeals for the Federal Circuit to overturn a decision by the US Patent and Trademark Office (USPTO) to reject the band’s trademark application for its name.

In an appeal brief filed at the court on Tuesday, August 4, the band reiterated its claim that the 2013 decision by the USPTO’s Trademark Trial and Appeal Board (TTAB) violated its First Amendment rights.

The Slants, an Asian-American rock band founded by Simon Tam, attempted to trademark the name of the band but was denied twice because the applied-for mark was deemed a disparaging term.

A ‘slant’ is a slang word for someone of Asian heritage.

The federal circuit, having previously upheld the USPTO’s rejection in April this year, will hear the case en banc—before all of its judges—in October this year.

In the brief, Tam’s representatives, from law firm Archer & Greiner, said “false arguments” about why the application was rejected had been put across by the government.

These were that the Lanham Act grants successful trademark owners a government subsidy or “other transfer of wealth”, that under the act trademarks are transformed into “government speech”, and that the act is a legitimate scheme for “managing offensive commercial speech”.

But the brief said there is no transfer of wealth or subsidy and that the government does not “bring” or “finance” trademark litigation—only trademark owners do.

On whether approved trademarks are transformed into government speech, it said that trademarks belong to the entity “whose goodwill is associated with them at all times that they remain in use”.

“That is one of the many reasons why in trademark infringement suits mark holders are plaintiffs, not the government,” the brief added.

According to the brief, the government’s argument about managing offensive speech is counteracted by the fact that it did not show that refusing to register offensive marks “alleviates racial intolerance”.

“Thus, refusing to register Tam’s chosen mark does not materially alleviate the harms identified by the government,” the brief added.

“Tam respectfully submits that the bar on registration of disparaging marks violates the First Amendment and, as a consequence, the TTAB’s decision should be reversed,” it said.

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More on this story

Trademarks
30 July 2015   A group of organisations that represent Asian lawyers has backed the US Patent and Trademark Office’s decision to reject a trademark application by US band The Slants, ahead of a court case.