A TRADEMARK ATTORNEY’S REVIEW OF IN RE SIMON SHIAO TAM

In this case, Mr. Simon Shiao Tam names his band “THE SLANTS” to make a statement about racial and cultural issues in this country.

Section 2(a) of the Lanham acts bars the Trademark Office from registering scandalous, immoral, or disparaging marks.  However, the government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. In this case, the Federal Circuit held that the Government cannot refuse to register marks because it concludes that such marks will be disparaging to others.

The Federal Circuit used a two part analysis to determine if a mark is disparaging. The first part is to 1) determine the likely meaning of the mark, and second 2) if there is a meaning that invokes a group of persons, whether that meaning may be disparaging to a substantial composite of the referenced group.

Initially, The Federal Circuit stated “THE SLANTS” likely refers to people of Asian descent and that based on available evidence, including dictionaries and other secondary sources, the term is generally perceived to be derogatory or demeaning towards Asians. Next, the Federal circuit determined that the term was likely offensive to a substantial composite of people of Asian descent. Utilizing the above reasoning, the Federal Circuit affirmed the Board’s decision of refusing the mark.

However, at a later point, the Federal Circuit vacated its own judgment. The Federal circuit at this case held that the government regulation at issue amounts to viewpoint discrimination, and concluded that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), the Federal Circuit concluded that it would also be unconstitutional to regulate of the commercial aspects of speech.

The Federal Circuit took a deeper dive into the disparagement provision of Section 2(a) to determine whether the refusal to register a trademark was content neutral discrimination, and that reactions to speech is not a content-neutral basis for regulation.  Further, the Court found Section 2(a) to discriminate on the basis of the idea the message conveyed. To prove its point, the Court gave several examples of registered trademarks that contained offensive terminology but were nonetheless registered. For example, DYKES on BIKES was registered after the applicant showed the term was used with pride in the lesbian community. Thus, the Court concluded that the government used Section 2(a) to stifle certain disfavored messages, which is viewpoint discrimination that must withstand strict scrutiny to be permissible.

The Court also found that trademarks grants significant financial advantages, and thus by not granting a trademark on the basis of Section 2(a), the government chooses to benefit some speakers while punishing those with whose message the government disagrees. Moreover, to receive an approved trademark, an applicant might choose only those that would not even be considered to violate Section 2(a). This has a “chilling of individual thought and expression.”

To this end, the Federal Circuit stated that although “THE SLANTS” may offend some, the same could be said about other forms of hurtful speech protected by the First Amendment.

TRADEMARK ATTORNEY’S TAKE-A-WAYS:

  1. It is very interesting that the Federal Circuit found the statute facially unconstitutional as applied to purely commercial speech. This is VERY strong precedent to set, and will be interesting to watch how this case is cited over the years.
  2. To me it was interesting that the patent and trademark office used an objective test in making their determination, rather than a subjective test.
  3. Second 2(a) of the Lanham act also covers scandalous marks (such as a lollipop shaped as a rooster named “Cocksucker”). If you are dealing with a case covered by Section 2(a) citing this case will be helpful to overcome rejections made by a trademark examiner in an office action.
By | 2016-12-27T15:29:06+00:00 January 29th, 2016|Blog|Comments Off on A TRADEMARK ATTORNEY’S REVIEW OF IN RE SIMON SHIAO TAM