A New Slant on Trademark Law

In 2006, Simon Tam founded an Asian-American rock band in Portland, Oregon. He named the band “Slants”. In Mr. Tam’s words, “It actually sounds like a fun, 80s, New Wave-kind of band. And it’s a play on words. We can share our personal experiences about what it’s like being people of color—our own slant on life, if you will. It’s also a musical reference. There are slant guitar chords that we use in our music.” Though the name is often characterized as a racial slur, the band adopted it to help to “reclaim” the term and drain its denigrating force. Consistent with this idea, one of the Band’s extended play albums is entitled, “The Band Who Must Not Be Named.” Currently all its members are people of Asian or Pacific Islander descent. The band is well known in the Asian-American community for fighting racist ideas and stereotypes.

The band sought to register its name as a service-mark with United States Patent and Trademark Office. The Office denied the request because of a provision of the Federal Trademark Act that prohibits the registration of a mark that may “disparage… any “persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The band took the case all the way up to the United States Supreme Court. On June 19th, the Court ruled that the statute that prohibits registration of a disparaging mark was unconstitutional on its face. The band won a victory not only for itself but for the First Amendment. No longer must an applicant fear an arbitrary decision by a bureaucrat regarding what is, or what is not, disparaging or the office becoming “speech police” by adhering to a statute that in the absence of the Supreme Court decision would be binding on the Office.

The decision is good news for Daniel Snyder and the Washington Redskins. Their registered trademark was cancelled at the behest of several Native-Americans because it allegedly disparaged Native Americans. The federal district court upheld the cancellation and Snyder and the Redskins appealed. The Slants case should compel the 4th Circuit hearing the Redskins’ appeal to overturn the cancellation.

Another portion of the statute under consideration by the Supreme Court allows the USPTO to refuse registration of a mark that is “immoral, deceptive or scandalous”. Given the recent decision can we expect a challenge of a refusal of a mark that the Office considers to be obscene? Stay tuned …..

(David B. Goldstein and John Lohr, Jr. have successfully obtained registration of many different categories of trademarks (for goods) and service-marks (for services). They are ready to provide peace of mind to those who seek to protect the logos, slogans, or other types of marks that identify the business that provides goods and services to the public.)

Written by Attorney David B. Goldstein, dbg@hgplaw.com

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