Asian American Band The Slants Can Trademark Name No Matter How Offensive It Might Be, Court Rules

Photo credit: Anthony Pigeon

A federal appeals court has ruled today that a provision of trademark law that found a Portland, Oregon rock band’s name was too offensive to be trademarked was a violation of the First Amendment. The band, an Asian American group known as The Slants, has been fighting for recognition from the U.S. Patent and Trademark Office for nearly six years.

"We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities," Judge Kimberly Moore wrote in the opinion.

"Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others," she wrote.

In a previous appeal the denial to extend trademark protection cited Section 2(a) of the Lanham Act, which prevents against the recognition of, among other things, “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The term “slants”, the USPTO arbiter believed, was a racial slur that disparaged Asians.

“It seems a little unreal at the moment, but definitely fantastic,” the band’s leader Simon Tam said when reached by phone shortly after the decision. “I’m trying to enjoy it for the moment, but I know that they’ll undoubtedly appeal and drag this to the Supreme Court.”

That’s a likely outcome, legal observers suspect, especially considering it’s a ruling that could have significant implications for other similar cases, like the ongoing saga of the Washington Redskins’s trademark, which was canceled in 2014 and has been wending its way through the appeals process ever since is currently sitting in the Fourth Circuit.

“I think for the Fourth Circuit this would be a pretty persuasive authority, where another appellate court has come out so strongly in favor of the plaintiff Mr. Tam,” J. Michael Keyes, an intellectual property partner at the international law firm Dorsey & Whitney explained. Section 2(a) was implicated in both cases.

The case has broader meaning for the First Amendment in general, Keyes suggested. “[Tam] wanted to get the full benefits of federal protection and the federal government said no, and ultimately that was reversed. I think this has potentially significant implications for anyone who is interested in attaining trademark rights. The court makes it pretty clear in the decision that the federal government cannot discriminate based on view points, yet that’s exactly what they did with section 2(a).”

As the ruling found:

“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. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), 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 (“Board”) holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.”

Tam, who’s spent the past year traveling the country, both touring with his band, and speaking at law schools and conducting interview about the case, said the outpouring of support from groups like the ACLU chapters of Oregon, Washington, Washington D.C., and the Cato Institute, who filed amicus briefs with the court arguing in his favor, was extremely heartening.

At its base, the case was never entirely about the trademark, he said.

“Undoubtedly, for us, it’s not just a trademark registration. If it was I would’ve given up half a decade ago. But our ban is equal parts arts as well as activism. I think this is a reflection of that work. We’re persistent, not only in creating music but in trying to change systemic racism.”

He’s been accused over the course of the case of opening the door for protection for racist speech, but that’s a stance he strongly disputed.

“For me I don’t see our case as this floodgate for racism or this Pandora’s box of hate speech. The reality is there is offensive content in our world and a lot of it is protected by the government through copyright, film, books, films.”

Trademarks are not applied the same way, he said.

“To me it speaks to a much bigger idea, which is that we should do more to focus on racism as if were only slurs. The discussion should be about more than slurs. If people are going to trademark things it creates that opportunity for discussion. I agree with the ACLU that the cure for bad speech isn’t censorship, it’s better speech, nuanced discussions.”

As an Asian American, Tam said he grew up facing racism on a consistent basis. The name of the band in the first place was meant as a salvo against that sort of hateful speech.

“It wasn’t until I stopped and took ownership of it, and re-appropriated it that things stopped. I realized that there’s power in claiming an identity, shifting the meaning and stereotype around.”

It’s an approach that’s roughly analogous to how African Americans and gay people have seized back the power of their own slurs in many cases, but with a caveat.

“It’s definitely similar, but our case is a little more unique in that [slant] is not an inherently racial slur. In most cases it’s just usually racists that will take that word and put a spin on it. It’s not exactly the same, but I think it’s similar in that it’s a mark of someone wanting to take ownership of an identity and use that as a form of self empowerment rather than a label or burden that somebody else puts on them.”

“We’re fighting for speech of the marginalized,” he went on. “We need to write laws for the marginalized, non-profits artists like myself, rather than writing laws around people with more resources, like a certain football team.”

Interestingly enough, he points out, the judge that found in his favor, Kimberly Moore, has written about how big a fan she is of the Redskins.

The Slants will release a new album, Something Slanted This Way Comes later this spring, and embark on a tour of China.

Luke O'Neil is a writer based in Boston. Follow him on Twitter.