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  • R. Scott Kimsey

"The Slants" Trademark Case Goes Before the Supreme Court

 "The Slants" are an asian-American rock band from Portland, OR, fronted by Simon Tam. A trademark application for the band's name has been pending before the United States Patent and Trademark Office ("USPTO") since 2011. The USPTO has refused to register the trademark.

15 U.S.C. 1502(a) (section 2(a) of the Lanham Act) prohibits the registration of a trademark that, among other things, "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 USPTO's position is that the words "the slants" are negative descriptors for the eye shape of certain people of asian descent, and is therefore disparaging and the trademark cannot be registered because of it.

The USPTO has used the same rationale to cancel or refuse to register other trademarks--most famously, the Washington Redskins, but also including marks like 2 Dyke Minimum, Urban Injun, and Ride Hard Retard. In 2015, the U.S. Court of Appeals for the Federal Circuit called all of these prohibitions into question when they decided an appeal by The Slants from the USPTO's refusal of their trademark. In a 9-3 decision, the Federal Circuit ruled that Section 2(a) violates the First Amendment. That case is now before the U.S. Supreme Court.

Tam does not like comparisons to the Redskins, and has provided a number of distinctions that he feels separates The Slants' case from that of the football team. If 2(a) is unconstitutional, however, then the door is open not just to The Slants but to other marks rejected under Section 2(a). If that section is unconstitutional, it cannot form the basis for any rejection of a trademark application.

A number of interesting questions are raised: 1) is it a problem that the government blesses speech it approves of with a trademark registration, but refuses to do the same for speech it doesn't like? 2) should these trademarks be left to rise or fall in the marketplace? 3) will the Supreme Court uphold or overrule the Federal Circuit generally, or will they try to craft some middle ground (and can they)?

We will have answers later in the year.

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