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On Monday, the U.S. Court of Appeals for the Federal Circuit weighed in on “disparaging” trademarks, and in a somewhat confounding outcome, ruled against an Asian-American band attempting to register the mark “The Slants” while suggesting in a quasi-concurrence that the Patent & Trademark Office isn’t constitutionally justified in refusing to register disparaging marks.
The appeal was made by Simon Tam, the Asian-American frontman for The Slants, who was attempting to “take ownership” of Asian stereotypes. After the PTO denied his efforts to register the band’s name for “entertainment, namely, live performances by a musical band,” his lawyers went to a federal appeals circuit and argued the denial was procedurally improper and that there were “serious questions about the constitutionality of placing so much policymaking power over issues concerning free expression and race in the hands of an agency charged by Congress merely with registering valid trademarks.”
“Disparaging” trademarks has been a tricky issue over the years. Why a mark like “queer gear” gets the green light while a mark like “clearly queer” doesn’t is almost anyone’s guess. Tam’s appeal was closely followed partly because it happened around the time the PTO decided to cancel the trademark of the NFL’s Washington Redskins, and although Tam wasn’t thrilled when observers began comparing his case to a professional football team’s own fight with Native Americans over a trademark, there is enough overlap in the legal issues that the Federal Circuit’s opinion over The Slants is sure to influence the Redskins’ own appeal.
Today, Federal Circuit Judge Kimberly Ann Moore delivered a head-scratching opinion that on one hand, represents a defeat for Tam, while on the other hand, in a section called “additional views,” comes to a seemingly opposite conclusion with an explicit reference to what’s happening with the Redskins.
In reviewing The Slants, a trademark examiner previously determined that people of Asian descent were likely to be offended, pointing in support to the band’s website, which displayed the band’s name next to “a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image.” Tam wanted to reclaim the slur, but his admissions to this apparently cut against his cause at the PTO.
Today, Moore affirmed the decision, finding that an appeals board at the PTO was allowed to consider evidence outside of the application, such as dictionary definitions and newspaper articles, that the board had come to the correct conclusion in determining that the mark referred to people of Asian descent, and was likely to be interpreted as disparaging to many of these people.
As for constitutional objections, most particularly the argument that the government couldn’t justify restrictions on speech, the judge says the “argument is foreclosed by our precedent” in McGinley, a 1981 ruling that held that “the PTO’s refusal to register appellant’s mark does not affect his right to use it.”
And yet, after affirming the decision refusing trademark registration on The Slants, Moore then offered up an additional section. It’s not called a “dissent,” nor a “concurrence,” just “additional views.” It could be that Moore couldn’t get her colleagues at the Federal Circuit to agree and still wanted to write the main decision, but she’s apparently writing her own retort.
She states, “It is time for this Court to revisit McGinley’s holding on the constitutionality of § 2(a) of the Lanham Act. Under § 2(a), the PTO may refuse to register immoral, scandalous, or disparaging marks.”
The judge responds to McGinley by saying that while it might be true that trademark refusals don’t bar the applicant from using the mark — The Slants can still perform under that name, after all — trademarks are important, and denials “burden use” of such marks. (It’s the very argument that Washington Redskins owner Dan Snyder is making in court.) The “content- based restrictions on registerability were adopted to reduce use of trademarks the government deemed unsuitable (such as those that disparage) — no doubt a chilling effect on speech,” she writes.
Moore looks at what possible reasons might justify the regulation of free speech, and pretty much rejects them all. She writes that the government might wish to discourage the use of disparaging marks, but it is “not a legitimate government interest.” Nor is there proper justification in the government’s excuse it wishes to maintain a well-functioning trademark system, she adds. And how about the argument that by approving a trademark registration, the government misleads the public into believing it is approving of scandalous and disparaging terms? The judge points to the PTO’s justification for canceling the Redskins trademark, emphasizing the part where the appeals board at the PTO says “the act of registration is not a government imprimatur or pronouncement that the mark is a ‘good’ one in an aesthetic, or any analogous, sense.”
In other words, the judge has turned that decision around on the government. She concludes, “We have yet to be presented with any substantial government interests that would justify the PTO’s refusal to register disparaging marks. … 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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