A federal appeals court has upheld a Patent and Trademark Office decision that denied Portland band The Slants a trademark for its name.

The Slants have been playing around the country for nearly a decade but have been unable to trademark their name.

The Slants have been playing around the country for nearly a decade but have been unable to trademark their name.

The Slants have been playing around the country for nearly a decade but have been unable to trademark their name./Courtesy of Simon Tam

Simon Tam, the band’s bass player and co-founder, has been trying to register the band’s name since 2010. In their ruling, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit affirmed the PTO’s initial ruling, saying that the name is disparaging.

The Slants is made up of Asian-American musicians. Tam has argued the federal restrictions are blind to the group’s attempt to reclaim an ethnic slur.

“I think it’s so much bigger than our band,” said Tam. “For me, it’s more of the principle of the matter. We have outdated laws that are not culturally competent.”

The ruling agreed with the PTO’s finding that there was evidence that Asian-Americans would object. But the decision also questioned whether it might be time to revisit certain aspects of trademark regulations because of developments in the law. You can read the full text at the bottom of this page

Tam said he has yet to talk in detail with the band’s lawyers, but that he thinks they will pursue a hearing before the full court of appeals.

Courtesy of Stanford Law School

We spoke with Mark Lemley, a professor of intellectual property law at Stanford Law School and director of the Stanford Program in Law, Science and Technology about the case. (This interview was slightly edited for space and clarity.)

What’s the jist of the decision?
What you saw — which is quite rare — is an opinion by a judge, on behalf of all three judges on an appellate court, followed by an opinion from the same judge offering so-called “additional views.” I think that happens in circumstances that the law requires a certain result, but at least one of the judges thinks that’s the wrong result and hopes it will be revisited.

What are some of the legal principals guiding cases like this?
We protect people’s trademarks, their brands, in order to prevent consumer confusion, allowing bands or any other business to identify themselves. The Trademark Act (the Lanham Act) provides that you can’t register your trademark — which confers certain advantages — if your mark is immoral or scandalous, or if it is disparaging to a person or group. The legal question in this case was whether the registration of the name “The Slants” for a rock band run by a group of Asians is disparaging, because the term is a slur against Asians, and should be rejected.

What was going on in American commerce at the time these rules were made?
The Act was passed in 1946. We’re just after World War II. We’re in the process of expanding business from a local to a national concern. We’re also starting to expand into different markets. One of the ideas behind the Lanham Act is we’ve got a nationwide registry where people can go and find out whether somebody’s already using a name for this product or a similar set of products, in order to prevent consumer confusion.

There definitely are a lot more trademark applications right now than when the act was passed. It’s also worth noting that the act’s limitation on immoral and scandalous marks has very different cultural meanings in 1946 than it does today. Some of the things that get labelled as immoral and scandalous in the early cases now sound ridiculous to us.

Meaning to say there was no irony back in 1946?
Maybe they took themselves more seriously and had less tolerance for what they considered to be vulgarity. There was a case from the last century in which the term “Doughboys,” which was used to refer to World War I soldiers, was found in 1951 to be disparaging and scandalous as it applies to condoms. The thinking of the trademark office was that a condom is such a disreputable product that you wouldn’t want to associate it with American soldiers. Today, I suspect, we’d be a lot more permissive.

Have there been other challenges of this kind to the Lanham Act or related laws?
Yes. The biggest one, lurking in the background to this [the Slants’] case is the challenge in the Blackhorse case to the Washington Redskins’ football team. The Trademark Office has held that the Redskins’ term is disparaging to Native Americans, and therefore the mark should be cancelled. That decision is on appeal now. I think the rulings and the precedent that’s set in the Tam case are going to be directly relevant to whether the Washington Redskins can hold onto their team name.

What should we make of some of the language later in the ruling, where it appears at least Judge Moore is saying it’s time to revisit the precedent, in light of changes in trademark law?
The First Amendment is a much more powerful constitutional force now than it was 40 years ago, especially as it pertains to commercial speech. As Judge Moore points out, the idea we might protect commercial speech was brand-new in 1970s. I think what she suggests is that the court has kind of given the back of it’s hand to the First Amendment arguments without really digging into those arguments.

This is an Asian group trying to reclaim a slur. The typical disparagement case says you have adopted this term which is offensive to a group, and they want it stopped. What’s interesting here is we’ve got the reverse situation: the term is offensive to Asians, but it’s an Asian rock band that’s trying to recapture the term, to own it and undo the harmful effects of the slur. Under current law that doesn’t make a difference, but I think there’s reason to think it’s going to make the case look more sympathetic when this goes either to the full federal circuit or the U.S. Supreme Court, which I suspect it will.

The Supreme Court has been very favorable to First Amendment claims of late, particularly in the business context. I think [the justices] are not going to be satisfied with the statement that this is the government conferring some benefits, and as long as the government is conferring benefits it can impose whatever restrictions it wants.

(* This story originally mis-identified Professor Lemley’s employer. OPB regrets the error. -ed)