The Slants Score Victory in Trademark Case

In a powerfully worded decision released early Tuesday morning– when the case’s namesake was likely still asleep in Oregon– the US Court of Appeals for the Federal Circuit sided with Simon Tam and his band, The Slants, that they should be permitted to trademark their name.

This is a developing story and, in true Washington, DC fashion, the decision came in the middle of a dead news week when no one’s paying much attention due to the Christmas holiday. We’ll have more information in the next few weeks after I get a chance to talk with Simon Tam, but the wording of the court’s decision seemed too good not to share now.

A little background: The Slants is a four-member Asian-American dance pop band based in Portland, Oregon. More than five years ago, a friend suggested to Tam that he file a trademark for the name for marketing purposes, but the US Patent and Trademark Office rejected the registration, claiming the name was offensive to Asian Americans. In a series of court hearings and trials, Tam often has been unable to speak on his on behalf, relying instead on teams of largely Caucasian attorneys to argue his case for him while another team of Caucasian attorneys cite the Lanham Act, an archaic and often forgotten part of US law adopted in 1946 to establish a national system for the registration and issuance of trademarks. Tam has noted in conversations with Geeks & Beats and other publications that several other trademarks have been issued using the word “slant,” but only his bands’ application has been rejected. This court case has drawn support from varied groups often at odds with each other, including the Cato Institute and the American Civil Liberties Union, along with the NFL’s Washington Redskins, whose own name has been the subject of a similar lawsuit filed with the Patent office.

This is a First Amendment case because it questions whether the use of the Lanham Act to reject a trademark or patent constitutes a limitation on free expression, something the court, in this ruling, seems to agree is the case and therefore a violation of the Constitution.

In the 110-page ruling, the banc of judges noted that words, even a single one, can have tremendous weight and power. Tam named his band The Slants “to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech…Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others.”

By refusing to allow the band to trademark their name, the US Patent and Trademark Office participated in “viewpoint discrimination,” the judges find, an action which is unconstitutional.

“Because the government has offered no legitimate interests justifying” the use of the Lanham Act, “we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech. We therefore vacate the Trademark Trial and Appeal Board’s holding that Mr. Tam’s mark is unregisterable…and remand this case to the Board for further proceedings.”

Our first post on the case can be found here.

J. Michael Keyes, a friend of G&B and copyright, advertising and trademark attorney with Dorsey & Whitney in Seattle, said Tuesday morning that the “decision, in a word, is huge.”

The ruling likely will have “significant implications,” he said.

“First, the Court’s decision discusses at length the expressive power and force of trademarks. As the Court noted, even a single word can be powerful. The Court found that the statutory provision at issue amounted to ‘viewpoint discrimination’ and, therefore, simply could not pass constitutional muster. Second, the Court’s decision also acknowledges the importance of federal trademark rights. A registrant obtains significant benefits through the registration process and the Court was loathe to deny those benefits to Mr. Tam simply based on the name he had chosen to register.”

And as we’re about to embark on 2016, it’s possible this ruling, handed down so late in the year, could make major headlines next year as the Federal Court considers further action in the legal battle over the Redskins trademark, he suggests.

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