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The Slants, an Asian-American rock band, founded by Simon Tam, had applied for\u00a0 the registration of their band name as a trademark. The U.S. Patent and Trademark Office (PTO) however, refused to grant THE SLANTS<\/strong> trademark registration under \u00a72(a), which bars registration for marks \u201c[c]onsist[ing] of or compris[ing] \u2026 matter which may disparage \u2026 persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.\u201d It stated that the mark was denied registration for being \u201ca highly disparaging reference to people of Asian descent\u201d that continues to be disparaging to \u201ca substantial composite of the referenced group.\u201d<\/p>\n The band then filed an appeal against the decision of the PTO at the Trademark Trial and Appeal Board (TTAB). The band\u2019s argument was that the decision of the PTO violates the First Amendment.\u00a0<\/strong>The First Amendment guarantees freedoms with respect to religion, expression, assembly, and the right to petition. \u00a0It forbids Congress from both\u00a0<\/a>promoting one religion over the other\u00a0and also\u00a0restricting an individual\u2019s religious practices. \u00a0It guarantees\u00a0freedom of expression\u00a0by prohibiting Congress from restricting the press or the rights of individuals to speak freely. \u00a0It also guarantees the right of citizens to\u00a0assemble peaceably and to petition their government.<\/strong><\/p>\n The band also argued that the term \u201cdisparage\u201d as it is used in \u00a72(a) is subjective and does not give \u201cthe person of ordinary intelligence a reasonable opportunity to know what is prohibited.\u201d The TTAB upheld the ruling of the PTO and on the issue of first amendment it opined that there is no violation as the band is still free to use the name, barring only the registration of such a mark.<\/p>\n Against the decision of the TTAB, the band appealed to the US Court of Appeals for the Federal Circuit, on the same grounds as contended in the lower Court.<\/p>\n The\u00a0 Court of Appeals , sitting en banc, struck down the USPTO decision and ruled the entire\u00a0section of the Lanham Act that\u00a0bars “disparaging” trademarks was unconstitutional. The panel rejected the disparagement argument, holding that although a \u201csingle objective measure\u201d is not enough to establish whether a trademark is disparaging, the \u201cwell-established two-part test\u201d articulated by the Federal Circuit in\u00a0Geller <\/em>[751 F.3d at 1358] is sufficiently precise to notify and instruct registration applicants.<\/p>\n Out of the panel considering the case, eleven judges agreed that the disparagement rule was unconstitutional, with nine of them siding with Judge Kimberly Moore’s majority opinion and two writing a concurring opinion that held\u00a0 \u00a72(a) as being in violation of the First Amendment as well as “unconstitutionally vague.” Three judges dissented, arguing that Mr. Simon Shiao Tam , founder of the band, should be granted his\u00a0individual trademark registration but that the statute shouldn’t be thrown out as unconstitutional on its face. Judge Timothy Dyk agreed with the Court\u2019s opinion on the band\u2019s name but dissented on the point that the provision under consideration was unconstitutional.<\/p>\n The majority acknowledged that its decision \u201cmay lead to the wider registration of marks that offend vulnerable communities\u201d however \u201cthe First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”<\/p>\n <\/p>\n The Slants decision and Redskins appeal<\/strong><\/p>\n In 2014,\u00a0the appeal board declared that the Washington Redskins moniker as offensive to Native Americans and therefore ineligible for federal trademark protection under the Lanham Act, which bars protection for names that \u201cmay disparage\u201d or bring people into contempt or disrepute.<\/p>\n It should be noted that though the decision of the First Circuit in the Slants case is not binding on the Fourth Circuit, which will be hearing the Redskins\u2019 appeal, it may still will have considerable effects.<\/p>\n <\/p>\n Authored by Anantha T.R.<\/p>\n Contributed with the support of the Entertainment Law Division of BananaIP Counsels.<\/p>\n For any trademarks or entertainment law related queries, please contact us on contact@bananaip.com<\/a><\/p>\n