Monday, April 20, 2015

THE SLANTS: No Registration for a Disparaging Trademark

The Slants found no respect at the federal trademark office, and now they have no respect from the Federal Circuit Court of Appeals.

The Asian American rock music group The Slants has sought to obtain a U.S. trademark registration for THE SLANTS for some time. But the group was turned down initially by the federal trademark examiner under a Section 2(a) finding of disparagement.

The federal trademark law prohibits registering a mark that "consists 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."

The trademark examiner determined that the mark would be disparaging to people of Asian descent. The group appealed to the Trademark Trial and Appeal Board (the Board), which upheld the examiner's rejection, stating 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."

I wrote about the question of registering THE SLANTS as a potential disparaging trademark in my January 7, 2015 blog post.

The band appealed the Board's refusal to register to the Federal Circuit, and today the appellate court affirmed the refusal. In a unanimous opinion, the Federal Circuit panel had little problem addressing the band's contentions under established trademark law. The band argued that the mark, THE SLANTS, is not disparaging. But the Federal Circuit agreed with the Board's finding that one meaning of the term "slants" refers to people of Asian descent, and that this meaning may be disparaging to a substantial composite of these people.

The band raised several constitutional issues, all of which were rejected by the Federal Circuit. The band argued that the refusal to register violated its First Amendment free speech rights in that the refusal suppresses the band's expression. The court, however, pointed out long standing case authority that a refusal to register is not a prohibition of use, and that the band can continue to use the mark and exercise its expression without a registration.

The band next argued that the standard to determine whether a mark is scandalous or disparaging is vague. But the Federal Circuit, while acknowledging that it may be "inherently difficult in fashioning a single objective measure like a substantial composite of the general public from the myriad of subjective viewpoints," nonetheless determined that the standard was not unconstitutionally vague.

The band argued that it was deprived of due process, arguing that the trademark office applies the disparagement standard arbitrarily and without clear guidelines in that the PTO has registered other marks that contain slurs against homosexuals, such as DYKES ON BIKES. But the Federal Circuit pointed out correctly that the band had a full opportunity to prosecute its trademark application and to appeal the refusal to register, so its procedural due process rights were not denied.

Lastly, the Federal Circuit addressed the band's contention that the rejection of its trademark application violated its equal protection rights. Here, the band argued that the trademark examiner rejected its application based on the race of the band members. The court, however, determined that the refusal to register was not based on the band's ethnicity but on the disparaging use of the term. The court observed that the use of the same term in the same manner by an all white band would receive similar treatment.

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