In Re: Simon Shiao Tam

Docket No. 2014-1203

Lourie, Moore, O’Malley

Decided April 20, 2015

Update: On April 27, 2015, the court reinstated the appeal and will hear the case en banc.

Brief Summary: PTO refusal to register the trademark THE SLANTS as being disparaging to people of Asian descent affirmed. Judge Moore argues this is erroneous (no “substantial governmental interests that would justify the PTO’s refusal”).

Summary: Simon Shiao Tam appealed PTO refusal to register its mark THE SLANTS regarding his Asian-American dance rock band The Slants. The examining attorney refused to register the mark in Tam’s first application, finding it disparaging to people of Asian descent under 15 USC § 1052(a) (§ 2(a) (PTO may refuse to register a mark consisting of “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”). A second application was filed (lacking the “Asian motifs” of the first) but the examining attorney again refused to register it as disparaging. The Board concluded “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 performance”, pointing to the band’s website display of the mark next to a “depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image” and to a “statement by Mr. Tam that he selected the mark in order to ‘own’ the stereotype it represents” as evidence. The FC opinion explained that “[a] disparaging mark ‘dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison’” and is identified using a two part test (In re Geller, FC 2014): 1) what is the likely meaning of the matter in question…and the manner in which the mark is used in the marketplace (important in cases, as here, where multiple meanings of a term exist)? 2) if the 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 (here, “the definitions in evidence universally characterize the word ‘slant’ as disparaging, offensive, or an ethnic slur used to refer to a person of Asian descent”). The opinion explained that precedent holds the applicant’s First Amendment rights “would not be abridged by the refusal to register his mark” (In re McGinley, CCPA 1981). It also explained that the two-part test is not unconstitutionally vague (Grayned, US 1972) and there was no due process violation since he “was provided a full opportunity to prosecute his applications”. Mr. Tam also unsuccessfully argued that “the examining attorney’s disparagement analysis hinged on his and his bandmates’ ethnic identities” which violated the equal protection clause. Thus, the Board decision was affirmed. Judge Moore provided additional views arguing that the court has “yet to be presented with any substantial governmental interests that would justify the PTO’s refusal to register disparaging marks” (“The purpose served by trademarks, to identify the source of the goods, is antithetical to the notion that the trademark is tied to the government.”)

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