The Slants are a Portland, Oregon based band. Their current band consists of 4 Asian men who play their sets at festivals and anime conventions. They are also involved in the Asian community and have maintained a goal to fight racist ideas and stereotypes. https://en.wikipedia.org/wiki/The_Slants. The band was somewhat popular but not as much until their current Supreme Court case. Since most recording companies like to have bands they sign have one or multiple trademarks, The Slants filed a request with the USPTO to trademark their name. Long story short-their application was denied, they took the denial to court. Then “In December 2015, a federal appeals court overturned a previous ruling that upheld the United States Patent and Trademark Office’s rejection of the band’s application by striking down part of a law that allowed the government to reject trademarks it deemed offensive or disparaging to others.” https://en.wikipedia.org/wiki/The_Slants
After winning their appeal case at the federal level because it was held that their trademark denial was also a freedom of speech denial. Because the federal case struck down part of a federal statute, it was likely that the Supreme Court would agree to consider the case (upon the government’s request). And, that’s exactly what happened.
All of this may sound similar to other recent trademark controversies such as the Redskins football one. It seems like this has been a pressing issue for the USPTO. What if one examiner finds a trademarked word endearing but another one finds it vulgar? What if one application appears sexual or derogatory but another just seems aggressive (but safe)? And what about the purpose of the trademarking person or group-what if it’s for an innocent item. For example, the Slants are a band playing music-they are not a terrorist group or a group promotional illegal activity by any means.
The Redskins case essentially still taking place. “U.S. District Judge Gerald Bruce Lee emphasized that the team remains free to use the name as it chooses and that the ruling means only that the team loses the specific legal protections of its federal registrations, which remain in effect until all potential appeals in the case are heard.”
In the Slants Supreme Court Case which has been going on the past few weeks and will continue for maybe a few more weeks, Justice Sotomayor hypothetically asked John Connell, attorney for the Slants whether, “Trump Is A Thief” Trademark would be legal. This question brought First Amendment considerations to the table. She continued by musing, “[Then] even if they go to court and prove that that’s a libel or a slander, that trademark would still exist and would be capable of use, because otherwise, canceling it would be an abridgement of the First Amendment?” John Connell responded that he believed that to be correct. That in essence his client’s name (The Slants) should receive trademark protection. Then if anyone was upset by it and faced damages, they could bring a case against it. As opposed to the other option, having the USPTO decide what may be offensive and thus limiting these trademarks.
A decision in the Slants Case brought up section 2A of the Lanham Act. The Trademark Office is not supposed to register marks that are disparaging. For example, you can say things like people with red hair are wonderful but not that people with red hair shouldn’t breed (as a trademark of course). http://www.newsmax.com/TheWire/supreme-court-offensive-trademarks-slant/2017/01/18/id/769124/
But.. The Slants is just one word (or two). And, the verbiage doesn’t provide disparaging outright disparaging meaning as these examples do. Especially since the group is Asian and supports Asian causes. Furthermore, what is disparaging? Couldn’t everything be seen as disparaging because it would be relative to the examiner (or the American public at large)?
The Supreme Court has some work and several questions to answer with this case. The Slants case will be an interesting holding as it may alter what the Trademark Office allows or doesn’t allow and where to draw the line with First Amendment Rights.
At Mohr IP Law we don’t assume that you or your trademark are disparaging. Give us a call today so that we can discuss your intellectual property future. Whether you are a band or have a band of ideas-we are ready to help.