Is Band's Name Too Offensive For Trademark Approval?

At the Federal Circuit, Tam and attorney Ronald Coleman are swimming against 34 years of precedents. But it sounded from Coleman's argument as if at least one judge wants to reconsider them. Judge Kimberly Moore described the seminal decision upholding Section 2(a) of the Lanham Act as outdated, cursory and a candidate for en banc review in light of “an immense evolution of Supreme Court jurisprudence on this point.” See, In re McGinley , 660 F.2. 481 (Ct. of Customs and Patent Appeals 1981).

Coleman at times seemed to be his own worst enemy during the 30-minute argument. The Goetz Fitzpatrick litigator sought to frame the case as one of administrative law, and had to be coaxed into making the constitutional case. When Judge Alan Lourie suggested that rejecting a trademark doesn't limit speech, but actually expands it, Judge Moore tried to help Coleman. “I would think you wouldn't agree with that,” she told him. “Just to help you out a little bit, say no. Just say no.”

“I would agree with it,” Coleman told Judge Lourie.

“You agreed with what he just said?” asked Moore.

Finally, Coleman got the hint. “I would agree that this court has every opportunity to make the First Amendment point,” he said. “I do believe this court has the opportunity to revisit its own precedent.”

Tam, who goes by the stage name Simon Young, formed his band in 2006 and styles its music as Chinatown Dance Rock. The band has enjoyed a measure of success, with one of its songs logging more than 300,000 views on YouTube, and the band merchandises its name and logo on cups, caps and apparel.

Tam applied for a formal trademark in 2010. According to documents filed in the case, he considers the name a point of cultural pride. “One of the first things people say is that we have slanted eyes,” he is quoted as saying. “I thought, 'What a great way to reclaim that stereotype and take ownership of it' 'and, in doing so, take away the power from those who try to use it as a term of hate.”

He submitted examples of the band's Asian-themed imagery to the PTO and said the mark was being used by Asian-Americans to describe Asian-Americans. A trademark examiner rejected the application, saying that, regardless, a substantial portion of the Asian-American community would be offended.

Tam then returned to the PTO the next year, distancing himself from the “reclaiming a stereotype” position and arguing that there is nothing inherently racist about the word “slants.” The same trademark examiner again rejected the application. In the context of articles about the band, its website and the fact that a public appearance by Tam had been canceled due to controversy over the band name, there were still grounds to find the name disparaging. The Trademark Trial and Appeal Board affirmed.

Coleman argued in January that the decision was unfair, that it was “entirely plausible” that Tam had learned his lesson from the first trademark rejection and was now using The Slants in a content-neutral way. That argument didn't go very far.

“Why didn't the applicant learn the lesson that it might be useful to bring in information to show, as he argues, that this is a generational issue and that a substantial cross-section of the affected population really isn't offended by this?” Judge Kathleen O'Malley asked.

It's hard to know what evidence to submit given the arbitrary positions taken by the PTO, Coleman argued. If an applicant wants to reclaim a stereotype, “he certainly is able to do so if he wants to reappropriate slurs that refer to sexual orientation. If however, he wishes to reappropriate slurs that have to do with ethnic identity, that's clearly a no-no.”

With prodding from Judge Moore, Coleman shifted gears to the First Amendment. “Obscene, scandalous, offensive. These are terms that in almost any other area of law we would acknowledge the government has virtually no business exercising control,” he told the appeals court.

Circuit Judges O'Malley and Lourie didn't sound persuaded. “Isn't there a difference, though, between prohibiting speech on the one hand, which very much would be censorship, and refusing to give one a monopoly on a particular mechanism for that speech?” Judge O'Malley asked.

PTO Associate Solicitor Molly Silfen tried to run with that theme. “There is no speech that is suppressed or proscribed by refusing to register a mark, and that's what this court has decided repeatedly,” she told the court.

But Judge Moore quickly pushed back. The court really analyzed the issue only once, and even then it was it “a relatively minor and unexplored point.” Since then the court has simply cited In re McGinley as settled authority. “I'm going now to whether there is merit to the argument to the contrary, such that we should take it en banc and reconsider the two sentences issued in McGinley 35 years ago,” Judge Moore said. “And possibly analyze them under what has been an immense evolution of Supreme Court jurisprudence on this point.”

Silfen declined Moore's invitation to engage on the issue. “If the court wants to take the case en banc it can,” she said. “But the panel is bound by the precedent of this court.”

Scott Graham is an Appellate Reporter with The Recorder, the San Francisco-based ALM sibling of Entertainment Law & Finance.

Offensive band names are a staple of rock music. Rock fans of a certain age will remember The Dead Kennedys of punk rock fame. The Butthole Surfers, Pussy Galore and Dying Fetus developed substantial followings despite, or because of, their outrageous names. Oregon dance rock band The Slants is another that seems determined to provoke. The band's Asian-American founder, Simon Tam, has said the band's name is not intended to offend people of Asian descent, but rather “a way to reclaim that stereotype and take ownership of it” ' much as Dykes on Bikes has done with sexual orientation stereotyping.

Tam has been trying for years to register his band's name with the U.S. Patent and Trademark Office (PTO), just as Dykes on Bikes did five years ago. But he's been rebuffed twice. In January, Tam's attorney argued to the U.S. Court of Appeals for the Federal Circuit that the Trademark Trial and Appeal Board lacks the constitutional authority to decide whether a mark is “disparaging” or “scandalous” and therefore unworthy of registration. In re Tam, 2014-1203.

Tam made his pitch the same day the U.S. Justice Department announced that it will defend the constitutionality of '2(a) of the Lanham Act against similar claims being pursued by the Washington Redskins. Both cases come amid the backdrop of a U.S. Supreme Court that has taken an increasingly hard line on viewpoint discrimination. In December 2014, the High Court decided to review whether the government can withhold vanity license plates on the ground of their offensive character.

At the Federal Circuit, Tam and attorney Ronald Coleman are swimming against 34 years of precedents. But it sounded from Coleman's argument as if at least one judge wants to reconsider them. Judge Kimberly Moore described the seminal decision upholding Section 2(a) of the Lanham Act as outdated, cursory and a candidate for en banc review in light of “an immense evolution of Supreme Court jurisprudence on this point.” See, In re McGinley , 660 F.2. 481 (Ct. of Customs and Patent Appeals 1981).

Coleman at times seemed to be his own worst enemy during the 30-minute argument. The Goetz Fitzpatrick litigator sought to frame the case as one of administrative law, and had to be coaxed into making the constitutional case. When Judge Alan Lourie suggested that rejecting a trademark doesn't limit speech, but actually expands it, Judge Moore tried to help Coleman. “I would think you wouldn't agree with that,” she told him. “Just to help you out a little bit, say no. Just say no.”

“I would agree with it,” Coleman told Judge Lourie.

“You agreed with what he just said?” asked Moore.

Finally, Coleman got the hint. “I would agree that this court has every opportunity to make the First Amendment point,” he said. “I do believe this court has the opportunity to revisit its own precedent.”

Tam, who goes by the stage name Simon Young, formed his band in 2006 and styles its music as Chinatown Dance Rock. The band has enjoyed a measure of success, with one of its songs logging more than 300,000 views on YouTube, and the band merchandises its name and logo on cups, caps and apparel.

Tam applied for a formal trademark in 2010. According to documents filed in the case, he considers the name a point of cultural pride. “One of the first things people say is that we have slanted eyes,” he is quoted as saying. “I thought, 'What a great way to reclaim that stereotype and take ownership of it' 'and, in doing so, take away the power from those who try to use it as a term of hate.”

He submitted examples of the band's Asian-themed imagery to the PTO and said the mark was being used by Asian-Americans to describe Asian-Americans. A trademark examiner rejected the application, saying that, regardless, a substantial portion of the Asian-American community would be offended.

Tam then returned to the PTO the next year, distancing himself from the “reclaiming a stereotype” position and arguing that there is nothing inherently racist about the word “slants.” The same trademark examiner again rejected the application. In the context of articles about the band, its website and the fact that a public appearance by Tam had been canceled due to controversy over the band name, there were still grounds to find the name disparaging. The Trademark Trial and Appeal Board affirmed.

Coleman argued in January that the decision was unfair, that it was “entirely plausible” that Tam had learned his lesson from the first trademark rejection and was now using The Slants in a content-neutral way. That argument didn't go very far.

“Why didn't the applicant learn the lesson that it might be useful to bring in information to show, as he argues, that this is a generational issue and that a substantial cross-section of the affected population really isn't offended by this?” Judge Kathleen O'Malley asked.

It's hard to know what evidence to submit given the arbitrary positions taken by the PTO, Coleman argued. If an applicant wants to reclaim a stereotype, “he certainly is able to do so if he wants to reappropriate slurs that refer to sexual orientation. If however, he wishes to reappropriate slurs that have to do with ethnic identity, that's clearly a no-no.”

With prodding from Judge Moore, Coleman shifted gears to the First Amendment. “Obscene, scandalous, offensive. These are terms that in almost any other area of law we would acknowledge the government has virtually no business exercising control,” he told the appeals court.

Circuit Judges O'Malley and Lourie didn't sound persuaded. “Isn't there a difference, though, between prohibiting speech on the one hand, which very much would be censorship, and refusing to give one a monopoly on a particular mechanism for that speech?” Judge O'Malley asked.

PTO Associate Solicitor Molly Silfen tried to run with that theme. “There is no speech that is suppressed or proscribed by refusing to register a mark, and that's what this court has decided repeatedly,” she told the court.

But Judge Moore quickly pushed back. The court really analyzed the issue only once, and even then it was it “a relatively minor and unexplored point.” Since then the court has simply cited In re McGinley as settled authority. “I'm going now to whether there is merit to the argument to the contrary, such that we should take it en banc and reconsider the two sentences issued in McGinley 35 years ago,” Judge Moore said. “And possibly analyze them under what has been an immense evolution of Supreme Court jurisprudence on this point.”

Silfen declined Moore's invitation to engage on the issue. “If the court wants to take the case en banc it can,” she said. “But the panel is bound by the precedent of this court.”

Scott Graham is an Appellate Reporter with The Recorder, the San Francisco-based ALM sibling of Entertainment Law & Finance.