Rock band The Slants cannot trademark disparaging name: appeals court

[April 21, 2015] By Andrew Chung

NEW YORK (Reuters) - Asian-American rock band the Slants, which says it chose its name as a way to reclaim a term usually considered a racial slur, cannot trademark the name because it is disparaging, a U.S. appeals court ruled on Monday.

The decision by the U.S. Court of Appeals for the Federal Circuit rejected the band's argument that the government's refusal to grant a trademark violated its free speech rights.

The ruling could have implications for the high-profile fight over whether the National Football League's Washington Redskins should lose its trademarks.

The Portland, Oregon-based band, which plays a kind of grunge music it calls Chinatown Dance Rock, applied for trademarks in 2010 and 2011, and was rejected both times on the grounds the name disparaged Asians.

The band appealed. Its lawyer, Ronald Coleman, argued that the name was a healthy reappropriation of a term usually considered a slur, much like the lesbian motorcycle club Dykes on Bikes, which did get a trademark.

The band argued that in acting as a "referee of political correctness," the U.S. Patent and Trademark Office violated the First Amendment.

The three-judge panel of the Federal Circuit said there was evidence the term is offensive to people of Asian descent. It said that there was no free speech violation since a refusal to federally register a trademark does not prevent the applicant from still using it.
 

Despite upholding the rejection of the Slants trademark, U.S. Circuit Judge Kimberly Moore said in a separate, non-binding opinion that it might be time to revisit the federal trademark law's disparagement provisions, which she said probably would not hold up under current free speech laws. The U.S. Supreme Court has said that even though some speech may be offensive, that "does not justify its suppression," she said.

The case has parallels to the Washington Redskins' lawsuit against five Native Americans who successfully convinced the PTO in June to cancel the NFL team's trademarks because that name disparages Native Americans. The team is appealing the cancellation, saying the disparagement provision violates the First Amendment.

Coleman called Monday's opinion "unnecessarily politicized" and said the band would likely seek review of the decision by the full Federal Circuit court. The USPTO declined to comment.

The case is In Re Simon Shiao Tam, U.S. Court of Appeals for the Federal Circuit, No 14-1203.

(Reporting by Andrew Chung; Editing by Alexia Garamfalvi and Ted Botha)

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