Did an Asian-American dance-rock band save the federal trademark registrations of a professional football team?
The band, which calls itself The Slants, sought to register its name as a federal trademark. (The band’s front man, Simon Shiao Tam, filed the application.) But the Patent and Trademark Office (PTO) refused to register the mark, finding that it was likely disparaging to persons of Asian descent. The Trademark Trial and Appeal Board (TTAB) affirmed the PTO examiner.
At issue was Section 2(a) of the Lanham Act, which bars the PTO from registering marks that (among other things) are scandalous, immoral, or that “may disparage … persons … institutions, beliefs, or national symbols, or bring them into contempt, or disrepute … .” 15 U.S.C. § 1052(a). A disparaging mark is one that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison. In re Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014).
In the case of THE SLANTS mark, the PTO examiner had refused registration under Section 2(a) because of the term’s long history of use in deriding and mocking a physical feature of Asian people. And though the applicant argued that the band had chosen its name to make a statement about racial and cultural issues—to “reclaim” or “take ownership” of Asian stereotypes—the examiner found that a “substantial composite of persons of Asian descent would find the term offensive.” The TTAB agreed, citing to dictionary definitions of the word as disparaging to Asian people as well as to objections from some people and groups in the Asian community.
The band appealed to the U.S. Court of Appeals for the Federal Circuit, in part arguing that Section 2(a) violates the First Amendment and is thus unconstitutional. Initially, a three-judge panel of the appeals court affirmed; as to the constitutional claim, the panel noted that “binding precedent”—a thirty-year-old case from an earlier court that the panel could not overturn—foreclosed the argument. But at least one judge on the panel was concerned about the constitutional issues: she wrote a separate opinion suggesting that the full court, which could overturn the precedent, should rehear the case. In re Tam, 785 F.3d 567, 573-85 (Moore, J., additional views), reh’g en banc granted, opinion vacated, 600 Fed. App’x 775 (Fed. Cir. 2015).
The full court did, in fact, take up the case, subsequently ruling in favor of the band and reversing the PTO and TTAB decisions. In re Tam, 2015 WL 9287035 (Fed. Cir. Dec. 22, 2015) (en banc). The court referenced a “bedrock” First-Amendment principle: “that the government may not penalize private speech merely because it disapproves of the message it conveys.” Though Section 2(a) does not prohibit speech—the band could still use the name—it penalizes speech by denying significant and valuable legal rights to some applicants and further chills the exercise of free speech by those who would otherwise want to obtain those benefits. Accordingly, the court ruled that the government “cannot refuse to register marks because it concludes that such marks will be disparaging to others.”
What does this have to do with professional football? As it happens, Section 2(a) is the same provision that the TTAB used to cancel the registrations of six trademarks belonging to the NFL team known as the Washington Redskins. The TTAB found that at the time of their registrations the marks “may disparage” a substantial composite of Native Americans and bring them into contempt or disrepute. The U.S. District Court for the Eastern District of Virginia affirmed while also rejecting the football team’s challenge to Section 2(a) based on the First Amendment—the same argument that the Asian rock band just won. Pro-Football, Inc. v. Blackhorse, 2015 WL 4096277 (E.D. Va. July 8, 2015).
The Washington team has appealed the decision to the U.S. Court of Appeals for the Fourth Circuit, a different appeals court from the one that ruled in favor of the Asian rock band. Notably, that court ruled Section 2(a)’s disparagement provision unconstitutional on its face, meaning that there is no application of it that would pass constitutional muster. Nevertheless, the Federal Circuit’s decision is not binding on the Fourth Circuit, which could decide the case a different way and uphold Section 2(a). But the Federal Circuit is a recognized authority on intellectual property issues, so the decision is sure to be persuasive on the Fourth Circuit. Smart money is on Washington team pulling out a win—and on the government asking the Supreme Court for review in one or both of the cases.