Wednesday, April 22, 2015

CAFC Affirms TTAB, Finds THE SLANTS Disparaging of People of Asian Descent

The CAFC affirmed the Board's decision [TTABlogged here] that upheld a refusal to register the mark THE SLANTS for "entertainment in the nature of live performances by a musical band," finding that the mark, when used in connection with applicant's services, would be perceived as disparaging to a substantial composite of the referenced group, namely persons of Asian descent, in violation of Section 2(a) of the Lanham Act. Circuit Judge Kimberly A. Moore provided "additional views" on the constitutionality of Section 2(a), suggesting that the Court should re-visit the CCPA's 1981 decision in In re McGinley in view of the subsequent evolution of First Amendment jurisprudence. In re Tam, Appeal No. 2014-1203 (Fed. Cir., April 20, 2015) [precedential].

The Slants album cover

The appellate court ruled that substantial evidence supported the Board's finding that the mark THE SLANTS likely refers to people of Asian descent. The fact that the term "slants" has some innocuous meanings makes it necessary to examine how the applicant uses the mark in order to determine its meaning. The Board relied on images from the band's website and Mr. Tam's own statement that in choosing the mark, he was "trying to think of things that people associate with Asians," in reaching its finding.

Substantial evidence also supported the Board's finding that THE SLANTS is likely to be perceived as "disparaging to a substantial composite of the referenced group." Dictionary definitions uniformly characterized the word "slant" as "disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent." A brochure published by the Japanese American Citizens League described the term "slant" as derogatory. New articles and blog posts discussing the band's name led to the cancellation of the band's performance at a conference for Asian youth.

As to the constitutionality of Section 2(a), the CAFC deemed that argument foreclosed by In re McGinley, which held that because the refusal to register a mark did not affect the applicant's right to use the mark, "[n]o conduct is proscribed, and no tangible from of expression is suppressed." Therefore the applicant's First Amendment rights were not abridged by the refusal to register.

Furthermore, the court ruled that Section 2(a) is not unconstitutionally vague, since the Board follows a well-established two-part test for disparagement. Nor was applicant's right to due process infringed, despite the registration of a slur like DIKES ON BIKES, because applicant had a full opportunity to prosecute his application and to appeal from the USPTO's final refusal. Moreover, each application must be examined on its own merits, and an error made in some other application cannot justify the improper registration of this applicant's mark.

Judge Moore provided 24 pages of "additional views," urging that "[i]t is time for this Court to revisit McGinley's holding on the constitutionality of Section 2(a)." She observed that there are three requirements for finding a violation of the First Amendment: (1) the speech at issue must be protected speech; (2) there must be governmental action that abridges that speech; and (3) the abridgement must be unconstitutional when analyzed under the appropriate legal framework.

Judge Moore maintained that a trademark constitutes a form of protected commercial speech because it identifies the source of a product or service and thus provides commercial information. Here, the mark THE SLANTS "does more that merely identify the band." Mr. Tam selected the name in order to "reclaim" and "take ownership" of Asian stereotypes. In short, "Mr. Tam and The Slants weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment." [Compare the REDSKINS mark on that point - ed.].

Moreover, although the applicant may continue to use the mark, the absence of a registration is significant. As the Supreme Court recently said in B&B Hardware v. Hargis, "The Lanham Act confers important legal rights and benefits on trademark owners who register their marks." Moreover, protection of an unregistered mark under Section 43(a) is available only if the mark could have qualified for registration. Denial of registration "severely burdens use of such marks." "Section 2(a)'s content-based restrictions on registrability were adopted to reduce use of trademarks the government deemed unsuitable (such as those that disparage) - no doubt a chilling effect on speech."

Finally, Judge Moore noted that Section 2(a) has not been analyzed under the "unconstitutional conditions" doctrine: the government cannot deny access to a benefit because of the potential recipient's exercise of constitutionally protected free speech.

Federal trademark registration confers valuable benefits, and under Section 2(a), the government conditions those benefits on the applicant's choice of a mark. Because the government denies benefits to applicants on the basis of their constitutionally protected speech, the "unconstitutional conditions" doctrine applies.

Section 2(a) is viewpoint-discriminatory because it bars registration of disparaging speech but not terms that refer to a certain group in a positive or non-disparaging way. Therefore Section 2(a) is presumptively invalid and must satisfy strict scrutiny to be constitutional. Moreover, even if strict scrutiny does not apply, Section 2(a) cannot survive even the intermediate scrutiny applicable to any restriction on commercial speech.

Applying the Central Hudson test for commercial speech, Judge Moore found that the government "has not put forth any substantial interests that would justify Section 2(a)'s bar against disparaging marks." The fact that protected speech may be offensive does not justify its suppression. Striking down the Section 2(a) bar would not disrupt long-standing, well-balanced common law principles, because there are no such principles applying to disparaging (as opposed to scandalous or misleading) mark: Congress created new law when it banned registration of disparaging marks. And finally, issuance of a trademark registration does not amount to the Government's imprimatur regarding the mark.

And so, Judge Moore concluded:

We have yet to be presented with any substantial government interests that would justify the PTO's refusal to register disparaging marks. Without this, Section 2(a) cannot satisfy the Central Hudson test. It is time to revisit the holding in McGinley in light of subsequent developments in the law and the trademark registration funding regime.

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Text Copyright John L. Welch 2015.


At 9:47 AM, Blogger Robert Frank said...

Isn't it interesting that Redskins and The Slants are disparaging but we have missiles named Tomahawk, helicopters named Apache, Blackhawk, Kiowa and Lakota and the mission to kill the worst person in the world (Bin Laden) was named Geronimo?

At 5:14 PM, Anonymous Anne Gilson LaLonde said...

Under Judge Moore's analysis, the trademark has to serve as more than a source identifier to receive First Amendment protection. The mark also has to make some sort of cultural or political commentary.

So yes to THE SLANTS but no to, say, PORNO JESUS and CUMFIESTA and BULLSHIT? What about SEX ROD or STOP THE ISLAMISATION OF AMERICA? Those two might get through. But this seems like a terrible way to distinguish between marks that deserve constitutional protection and those that don't.

At 6:05 PM, Anonymous Anonymous said...

Respectfully, I disagree that there are no significant government interests in light of the all the research on the stereotyping harm caused to groups that are singled out with racial slurs (see Washington football team studies). If this is commercial speech, why wouldn't that be a sufficient interest given the lower protections afforded commercial speech?

At 3:09 AM, Anonymous Anonymous said...

To your question Robert Frank, no.


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