SCOTUS Takes on the Musical Group “The Slants”

By Donna L. Mirman

This fall, the U.S. Supreme Court agreed to consider whether a specific provision of the Trademark Act which bars the registration of disparaging trademarks violates the First Amendment right to free speech. In the case Lee vs. Tam, the Supreme Court will rule on whether the refusal to register the band name THE SLANTS by the United States Patent and Trademark Office (“USPTO”) pursuant to Section 2(a) of the Lanham Act on the grounds of disparagement, is a violation of First Amendment rights. Specifically, the case focuses on the Asian rock band The Slants and the Trademark Office’s refusal of the application to federally register the band name filed by its founding member, Simon Shiao Tam. Tam’s application was refused registration on the grounds “that the applied for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.”

By way of background, The Slants is an Asian-American band founded by Simon Shiao Tam. All four members of the current lineup of the band are of Asian Pacific Island descent and well-known for their involvement with the Asian American community, playing at cultural festivals and anime conventions focusing on Japanese culture. Notwithstanding the band’s positive involvement with the Asian-American community and focus on overcoming racism and stereotypes, the Examiner found that lack of disparaging intent is not dispositive on the issue of disparagement in the analysis of federal registration. In support of the refusal, the Examiner attached evidence consisting in part of online dictionaries which showed that the likely meaning of “SLANTS” is a negative term which has a long history of being used to deride and mock a physical feature of individuals of Asian descent.

On appeal, the Court of Appeals for the Federal Circuit (“CAFC”) in In re Tam ruled in Tam’s favor, concluding that the disparagement clause of the Lanham Act is unconstitutional in violating the First Amendment’s guarantee of free speech. The CAFC dismissed the USPTO’s argument that a federal trademark registration is “government speech.” In holding that the disparagement clause of the Lanham Act is an unconstitutional violation of the First Amendment’s free speech guarantee, the CAFC found that the USPTO may not penalize free speech merely because the government agency does not endorse the message the trademark conveys.

Undoubtedly, the CAFC’s decision has generated much controversy and could have much broader implications on the USPTO’s ability to deny registration of marks deemed scandalous or vulgar. Michelle Lee, the current Director of the USPTO requested review of the CAFC decision and has filed a petition to the Supreme Court to review the constitutionality of Section 2(a) of the Lanham Act. On September 29, 2016, the Court granted the petition to hear the case of Lee v. Tam which will probably be decided sometime in the spring of 2017.

Tam and his band are not the only litigants currently trying to invalidate Section 2(a). In the USPTO’s high profile decision of 2014 regarding the Washington Redskins, the Trademark Trial and Appeal Board cancelled six of Pro- Football Inc.’s registrations for various iterations of the REDSKINS name on the grounds that the marks were disparaging to Native Americans. An appeal of the 2014 decision is currently pending before the Fourth Circuit.  In Lee vs. Tam, Pro-Football has filed an amicus brief urging the Supreme Court to hear its case alongside Tam’s rather than having to wait for the Fourth Circuit to rule.

In addition to the Redskins and the Slants, the USPTO has made many similar calls pursuant to Section 2(a). For example, registration was refused for various applications for the mark HEEB on the grounds that the mark referred to an anti-Semitic ethnic slur. More recently, the slogan “Stop the Islamization of America” was refused on the grounds that it is disparaging to Muslims.

The Supreme Court ruling in Lee v. Tam Slants will most likely not only impact the high-profile dispute over the name of the Washington Redskins, but more importantly, a ruling in favor of Tam may cause a proliferation of possible disparaging marks and racial slurs. Racial profiling is still a deep rooted problem and we need to be very mindful of how we choose to call ourselves at this pivotal point in American history. In any event, it is important to check with trademark counsel before adopting any mark which can potentially be deemed disparaging or have racial implications.