Recent developments in the ongoing trademark dispute involving Asian American dance rock band “The Slants” have reignited discussion regarding disparaging marks and free speech. Last month the band argued before a U.S. appeals court that the government’s rejection of its trademark application pursuant to “the provision in the Lanham Act that bars disparaging trademarks violates the First Amendment and should be given the strictest level of scrutiny by the court”.
A full Federal Circuit hearing has been set for October 2015 to hear oral arguments.
The provision the courts are referring to is section 2(a) of the Lanham Act, which prohibits registrations of marks that are scandalous or immoral. The U.S. Patent and Trademark Office (PTO) uses a two-prong test to test if a mark is disparaging. First it examines what the likely meaning of the mark is. Then it determines if that meaning refers to an identifiable group and whether it is disparaging to a substantial composite of that group.
The Lanham Act has allowed for the definition of scandalous, immoral or disparaging trademarks to be left up for debate. However, the courts have said the statute is not unconstitutionally vague: “the field is almost limitless from which to select words for use as trademarks, and one who uses debateable marks does so at the peril that his mark may not be entitled to registration”.
The reopening of The Slants’ case has ignited debate regarding how far governments can go in restricting an individual’s’ right to free speech with regards to trademarks. How the courts proceed in this case will have far reaching implications for the future and could result in a fundamental change of practice regarding the treatment of disparaging marks.
The band first filed for a trademark in 2010 but were refused by the PTO who cited online sources such as the Urban Dictionary and Wikipedia in their explanation of why “The Slants” is derogatory. Originally, the group’s lead singer Simon Tam said the band’s name was not a reference to it’s members’ Asian-American ethnicity, but rather to musical chords. In a 2013 interview with TIME magazine, Tam argued that naming the band “The Slants” was reclaiming the word from any derogatory meaning.
As a part of the defense’s argument, Tam’s lawyers included a national survey conducted by professors from Illinois’ North Central College and New York University which polled members of the Asian/Pacific Islander community. This survey was done in support of Tam’s trademark registration and in it the statement “I find the name of the group The Slants to be disparaging” was posed. 16 percent of participants agreed with the statement while 46 percent disagreed (the remaining 38 percent stated they neither agreed nor disagreed). When participants were asked to answer the question under the presumption that membership of the band was exclusively Asian-American, a majority of respondents agreed they did not think the name is disparaging.
On April 20th, 2015 Federal Circuit Judge Kimberly Ann Moore upheld the court’s decision to refuse a trademark registration writing in her ruling that “The Slants would be perceived as offensive by a substantial fraction of Asians”.
However, in a section of the ruling titled “additional views,” Justice Moore attacked a precedential 1981 ruling which allows individuals the right to use their mark despite PTO’s refusal to register it. In Justice Moore’s view there were constitutional reasons to re-examine whether PTO should refuse disparaging marks and arguably harm free speech. This “additional views” section holds no legal weight, but points to a possible shift in the courts’ opinions on disparaging marks.
With the possibility for a shift in the way the U.S. deals with disparaging trademarks, there is speculation over whether this could change rulings of similar cases, including the Washington Redskins’ trademark dispute. Earlier this month a U.S. federal judge upheld an earlier ruling by the federal Trademark Trial and Appeal Board cancelling the team’s trademark registrations after its name was deemed disparaging to Native Americans. However, until this new Federal Circuit hearing has taken place, the influence The Slants’ case will have is still unclear.
Would The Slants’ fate be any different if they had registered their trademark in Canada? Unlike American law, which allows applicants to continue using their mark even if it is rejected by the trademark office, Canadian law does not allow the use of marks deemed disparaging.
Setting the benchmark for what is perceived as offensive “by a substantial fraction of an identifiable group” is difficult in countries as diverse as the United States and Canada. Of course there are instances where it is obvious whether a term or word is offensive to the majority of a group. However, there are many situations where it is not quite as clear.
As both countries continue to become more diverse, the idea of what is offensive and what is not will blur even further. This raises the question of whether governments should still tightly oversee whether a mark is disparaging. The time and place for governments to closely dictate what is offensive may no longer be needed. In today’s world, individuals turn to online channels to express their disdain for something they deem offensive or rally the masses to boycott a company and/or product. Could the same not work for trademarks? Sure, we can grant a person protection to their mark but it is only useful if individuals are willing to buy goods or services bearing that mark. As Moore J suggested, maybe it is time we re-examine the extent to which a government has the ability to refuse a mark and allow the citizens themselves to decide whether it is truly offensive.
Samantha Sim is an IPilogue Editor and a graduate of Ryerson University’s School of Journalism.