The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) affirmed last month the USPTO refusal to register the mark THE SLANTS because it is considered disparaging. The case is In re Simon Shia Tam.
Simon Tam, the applicant, is the bassist of The Slants, a music group from Portland, Oregon, which plays dance rock music. Members of the group are all Asian Americans.
In November 2011, Mr. Tam filed a trademark application for the mark THE SLANTS in international class 41 which covers “entertainment in the nature of live performance by a musical band.” The USPTO refused to register the trademark as it considered the mark to be disparaging. The USPTO made the refusal final and Mr. Tam appealed to the TTAB, which affirmed.
A Two-Factors Test to Determine if a Trademark is Disparaging
The Lanham Act, U.S.C § 1052(a), prevents the registration of a trademark which “may disparage.”
The TTAB noted in its Harjo v. Pro-Football 1999 decision that determining if a matter is disparaging is “highly subjective.” In Harjo, the TTAB established a two-part test to determine if a particular mark is disparaging, which is now used by the USPTO and the TTAB when determining whether a matter may be disparaging under Trademark Act Section 2(a):
(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 and/or services, and the manner in which the mark is used in the marketplace in connection with the goods and/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.
What is the Likely Meaning of THE SLANTS and Is It Disparaging?
The examining USPTO attorney found that SLANTS was disparaging, as it is “a negative term regarding the shape of the eyes of certain persons of Asian descent” and was “an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals.” The examining attorney provided several dictionary definitions to support his statement. He also noted that “the band’s name has been found offensive numerous times” and that the Japanese American Citizens League stated that the term “slant” is derogatory and should not be used.
The examining attorney again provided evidence in its appeals brief that the meaning of ‘slant’ in this particular application was one demeaning to people of Asian descent.
When answering the Office Action, applicant had argued that ‘Slants’ is a “plain English word… that only could, but need not, have a disparaging connotation” and submitted into evidence dictionary definitions in that sense. Applicant argued that the cases cited by the examining attorney in the office action were all cases where the meaning of the term could only be disparaging, such as ‘squaw’ or ‘heeb,’ whereas ‘slant’ could or could not be disparaging.
Applicant used the same argument in appeals, and submitted as evidence to the TTAB dictionary entries providing several meanings for “slant” as well as several trademark registrations for SLANT. But in these cases, the meaning of slant was “slope.” He also argued that the USPTO seemed to have refused to register the trademark because of the particular ethnic descent of the applicant, a statement which probably did not help his cause, but that the band nevertheless continues to claim on social media.
Indeed, many words have different meanings. What is important under the two-part test is the ‘likely meaning’ of the term in a particular trademark application.
Should Self-Disparaging Trademarks be Registered?
In an article on self-disparaging trademarks published in 2006 in the Columbia Law Review, Todd Anten noted that “[t]he reappropriation of slurs is a common source of empowerment among disparaged groups” (p.392).
It seems indeed that Mr. Tam chose to name his music group ‘the slants’ because of the disparaging use of the term, albeit not to disparage, but to reclaim the term. The examining attorney pointed that out in his final action letter: “Further, applicant (and his fellow band members) have repeatedly indicated that the name THE SLANTS is in fact a direct reference to the derogatory meaning of the term and in fact, they are embracing the derogatory meaning of the term.”
Mr. Tam had first tried the register THE SLANTS as a trademark in 2010, but did not succeed, on the same disparaging grounds, and the trademark was abandoned. In the response to the office action to this first trademark application, Mr. Tam argued then that THE SLANTS was “a positive term of self-reference that promotes cultural pride and recognition.”
Mr. Tama then wrote in a 2011 blog post that by registering a term which is derogatory toward Asians, his goal was to reclaim it: “We deliberately chose this outdated, generational term to inject pride into Asian American culture.” For example, The Slants’ debut album was called Slanted Eyes. Another of its albums is called Yellow Album. However, as noted by the USPTO examining attorney,“[t]he lack of a disparaging intent is not dispositive on the issue of Section 2(a) disparagement in the Federal registration analysis.” In other words, having the best of intentions is not a defense.
In a somewhat similar case, the USPTO ultimately accepted the register DIKES ON BIKES, albeit after quite a bit of back-and-forth correspondence with the registrant, a group of homosexual women organizing motorcycles rides. But in that case, the USPTO finally accepted to register the trademark as it was convinced that most members of the referenced group, homosexual women, accepted the term ‘dikes’ as non disparaging.
The Referenced Group
Mr. Tam argued when answering the first office action letter in his first attempt to register the trademark that “members of the referenced group have widely embraced Applicant’s Mark” and submitted evidence about the success of The Slants within the Asian community.
But it seems that the only way applicant could have convinced the USPTO/TTAB that the term ‘slants’ used in the trademark was not disparaging was to provide convincing evidence that a substantial composite of the referenced group does not consider ‘slant’ as demeaning, because, under the second part of the test, the meaning of the term has to be disparaging to a substantial composite of the referenced group.
That means in practice that the disparaging meaning of the term must already have been reclaimed by the majority of the referenced group before the trademark can be registered, and applicant must provide evidence of such to the USPTO or the TTAB. Applicant apparently failed at providing such evidence in his first trademark registration attempt. He choose instead to argue at his second attempt at registration that the term is not disparaging, and that the reason the trademark registration was denied is because of applicant’s ethnic background, a rather inflammatory argument.
The case seems ripe for appeal. Stay tuned…
Image is Chinatown at night courtesy of Flickr user Corey Burger pursuant to a CC BY-SA 2.0 license.
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