Asian-American Band’s Uphill Battle to Register “The Slants” as Trademark

An October 20, 2013 story on National Public Radio (NPR) reports that an Asian-American music group from Portland, Oregon, has been fighting with the U.S. Patent and Trademark office for four years in an attempt to register their name–”The Slants”–as a service mark.

The U.S. Lanham Act, 15 U.S.C. Section 1052(a), provides in part that a trademark may be refused registration if it “[c]onsists of or comprises 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.”

In office actions, the USPTO denied registration of The Slants’ name on the ground that it is “derogatory.” Citing newspaper articles, Wikipedia, and a variety of other sources, the USPTO trademark examiner asserted that,

 [T]he likely meaning of ‘THE SLANTS’ [is] a negative term regarding the shape of the eyes of certain persons of Asian descent.…This refers to persons of Asian descent in a disparaging manner because it is an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals.

The band requested that the USPTO reconsider its refusal to register the mark. However, the examiner upheld the earlier determination. The band appealed that decision to the Trademark Trial and Appeal Board (TTAB). In the appeal, the band argued that its name was not disparaging, but that even if it were, the band had the right freely to express itself through the use of a term that some find disparaging. In a 26 September 2013 decision, the TTAB affirmed the decision to deny registration of the mark, noting among other things that “the band’s entry in Wikipedia is of record and references that, ‘The band name, The Slants, is derived from an ethnic slur for Asians.’” The TTAB characterized the band as arguing that it “intentionally adopted the mark because it is disparaging to some, but we should ignore that because [the band] is Asian and should not be perceived as intending to disparage other Asians but, rather, as redefining the term in a positive way.” According to the TTAB,

 The focus of the inquiry into whether a mark is disparaging is not on applicant’s race but rather on the referenced group’s perception of the likely meaning of the mark. The evidence clearly shows both that members of the referenced group ascribe the derogatory meaning based on applicant’s manner of use and that members of the referenced group find it objectionable. There are no “other elements” in the mark to affect its meaning, and there is nothing about the way the mark is used in the marketplace from which one would understand the term as meaning anything other than an Asian person. Thus, the refusal is properly based on the perceptions of the referenced group and not on applicant’s or his band-mates’ ethnic background.

The TTAB emphasized that its decision only prevented the band from registering the mark and did “not affect [its] right to use it. No conduct is proscribed, and no tangible form of expression is suppressed.” For these reasons, the TTAB concluded that the band’s “First Amendment rights would not be abridged by the refusal to register [its] mark.”

The NPR story explains that the band is preparing an appeal to the U.S. Court of Appeals for the Federal Circuit, which reviews decisions of the TTAB.

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