The First Amendment strikes again


The Slants, an Asian-American rock band, founded by Simon Tam, had applied for  the registration of their band name as a trademark. The U.S. Patent and Trademark Office (PTO) however, refused to grant THE SLANTS trademark registration under §2(a), which bars registration for marks “[c]onsist[ing] of or compris[ing] … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” It stated that the mark was denied registration for being “a highly disparaging reference to people of Asian descent” that continues to be disparaging to “a substantial composite of the referenced group.”

The band then filed an appeal against the decision of the PTO at the Trademark Trial and Appeal Board (TTAB). The band’s argument was that the decision of the PTO violates the First AmendmentThe First Amendment guarantees freedoms with respect to religion, expression, assembly, and the right to petition.  It forbids Congress from both promoting one religion over the other and also restricting an individual’s religious practices.  It guarantees freedom of expression by prohibiting Congress from restricting the press or the rights of individuals to speak freely.  It also guarantees the right of citizens to assemble peaceably and to petition their government.

The band also argued that the term “disparage” as it is used in §2(a) is subjective and does not give “the person of ordinary intelligence a reasonable opportunity to know what is prohibited.” 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.

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.

The  Court of Appeals , sitting en banc, struck down the USPTO decision and ruled the entire section of the Lanham Act that bars “disparaging” trademarks was unconstitutional. The panel rejected the disparagement argument, holding that although a “single objective measure” is not enough to establish whether a trademark is disparaging, the “well-established two-part test” articulated by the Federal Circuit in Geller [751 F.3d at 1358] is sufficiently precise to notify and instruct registration applicants.

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  §2(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 individual trademark registration but that the statute shouldn’t be thrown out as unconstitutional on its face. Judge Timothy Dyk agreed with the Court’s opinion on the band’s name but dissented on the point that the provision under consideration was unconstitutional.

The majority acknowledged that its decision “may lead to the wider registration of marks that offend vulnerable communities” however “the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”


The Slants decision and Redskins appeal

In 2014, the 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 “may disparage” or bring people into contempt or disrepute.

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’ appeal, it may still will have considerable effects.


Authored by Anantha T.R.

Contributed with the support of the Entertainment Law Division of BananaIP Counsels.

For any trademarks or entertainment law related queries, please contact us on [email protected]

Sources 1,2,3,4,5

Image Source/Attribution- here, this image is in the public domain.

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