Offense is the new defence:US Court lifts ban on offensive trademarks

In a rather rare and surprising judgement[1], the US Federal Court held that the law banning registration of disparaging trademarks is unconstitutional.An Asian-American band,called ‘The Slants’ took up a legal battle against this 70 year old provision which prohibits registration of offensive trademarks, resulting in a major decision in their favour.

In 2010, the band filed a trademark application[2] seeking to register the mark “The Slants” for “Entertainment, namely, live performances by a musical band.” The examiner found the mark disparaging to people of Asian descent under § 2(a) and therefore refused to register it. On appeal, the case was dismissed for failure to file a brief. The band again applied for the same mark in 2011, (from which the present appeal arises) on the basis of his user since the year 2006. The examiner found that the mark likely referred to people of Asian descent in a disparaging way, explaining that the term “slants” had “a long history of being used to deride and mock a physical feature”[3] of people of Asian descent. And even though Mr. Tam may have chosen the mark to “reappropriate the disparaging term,” the examiner found that asubstantial composite of persons of Asian descent would find the term offensive.

The Board affirmed the examiner’s refusal to register the mark. The Board stated that “it is abundantly clear from the record not only that “The Slants”would have the ‘likely meaning’ of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances.” To support its finding that the mark likely referred to people of Asian descent, the Board pointed to dictionary definitions, the band’s website, which displayed the mark next to “a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image,” and 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 “the 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. The Board therefore disqualified the mark for registration under § 2(a).

A disparaging mark is a mark which “dishonours by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” To determine if a mark is disparaging under § 2(a), a trademark examiner of the USPTO considers:

(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 or services, and the manner in which the mark is used in the marketplace in connection with the goods 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 Court stated that the expressive powers of trademarks should not be undermined. Many of the marks rejected as disparaging convey hurtful speech that harms members of often stigmatized communities. But the First Amendment protects even hurtful speech[4]. Upholding the claims of Mr. Tam, the Court decided in favour of the band.

This decision is likely to have repercussions for other controversial trademark owners.

[1]Appeal from United States Patent Trademark Office Trademark Trial and Appeal Board, Trademark Trial and Appeal Board in No. 85/ 472,440, available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1203.Opinion.12-18-2015.1.PDF

[2]App. No. 77/952,263

[3]Supra Note 1

[4] Asian-American band “The Slants” overturns USPTO rule on “disparaging” trademarks “, available at http://arstechnica.com/tech-policy/2015/12/federal-circuit-judges-say-rule-against-disparaging-trademarks-is-unconstitutional/

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