Band vows to challenge ruling on ‘disparaging’ trademark
The founder of rock band The Slants has vowed to challenge a court ruling that backed the US Patent and Trademark Office’s (USPTO) decision to reject a trademark application for the band’s name on the grounds that it was “disparaging”.
Speaking exclusively to WIPR, Simon Shiao Tam said he will challenge a recent decision by the US Court of Appeals for the Federal Circuit and ask for a re-hearing en banc (in front of all the court’s judges).
Tam added that the USPTO, which twice rejected the band’s trademark applications for the name ‘The Slants’, should not decide what constitutes disparaging.
On Friday (April 17), three judges at the federal circuit upheld the USPTO’s decision to reject the band’s latest application.
In its decision, the court agreed with the USPTO and ruled that the term, sometimes seen as derogatory by people of Asian heritage, was disparaging and therefore ineligible for being registered as a trademark.
The court added that the band’s First Amendment right, which protects free speech, was not violated by the USPTO’s refusal of the mark.
For Tam, however, the USPTO should not decide what is disparaging.
He said: “I don’t think the USPTO has any place in determining what is disparaging or not. Not only do they lack the resources to do so, it is completely irrelevant to the purpose of a trademark registration: to protect intellectual property and prevent confusion in the marketplace.
“The biggest problem with the USPTO’s decision had more to do with the evidentiary record. The USPTO could only find disparaging applicants of ‘slant’ when they spiked the search with disparaging and other racial slurs.”
Tam added that he was concerned that the court’s decision could be used to influence another trademark dispute, involving the National Football League (NFL) club the Washington Redskins.
In June 2014, the club had six trademarks containing variations of the term ‘Redskins’ cancelled after they were challenged by a group of Native Americans on the grounds that they were disparaging.
The NFL club has since sued the Native Americans in response and the case is continuing.
Despite the setback for The Slants, Tam said the band will not change its name.
The USPTO said it does not comment on individual trademark cases.
