In re Simon Shiao Tam, No. 2014-1203, 2015 U.S. App. LEXIS 6430 (Fed. Cir. Apr. 20, 2015) (Moore, J.). Click Here for a copy of the opinion.
Simon Shiao Tam ("Mr. Tam"), who founded the Asian-American band The Slants, filed an application to register THE SLANTS for "Entertainment, namely, live performances by a musical band." The examining attorney found the mark disparaging to people of Asian descent under 15 U. S. C. § 1052(a) ("§ 2(a)"), and rejected the application. Mr. Tam filed a second application to register the same mark for essentially identical services. Unlike the specimens attached to the first application, the new specimens did not contain Asian motifs. The examining attorney again found the mark disparaging. The TTAB affirmed the examining attorney's refusal to register the mark. Mr. Tam appealed, arguing that the TTAB erred in finding the mark disparaging under § 2(a), and challenging the constitutionality of § 2(a).
The Federal Circuit affirmed. Following In re Geller, 751 F.3d 1355 (Fed. Cir. 2014), the Court applied a two-part test to determine that the mark is disparaging. First, the likely meaning of THE SLANTS mark was found to refer to people of Asian descent. The fact that the term "slants" has some innocuous meanings – and that some trademarks have issued with those innocuous meanings – does not foreclose the possibility that the term may also be used in an offensive manner, even when the non-disparaging meanings are more common. Second, the definitions in evidence universally characterized the word "slant" as disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent. There was substantial evidence to support the TTAB's finding, even without a marketing survey or other quantitative measure of the term's offensiveness. Further, the TTAB lacks the resources to conduct a marketing survey.
Mr. Tam argued that the Lanham Act's restrictions on disparaging trademarks are unconstitutional under the First Amendment both facially and as applied in this case because § 2(a) conditions a benefit (e.g., trademark registration) on relinquishing free speech. The Court disagreed, finding that the PTO's refusal to register Mr. Tam's mark does not affect his right to use it. The "scandalous" and "disparage" terms in § 2(a) are not unconstitutionally vague, as the TTAB follows a well-established two-part test to determine if a mark is disparaging. Further, there was no due process violation in this case because Mr. Tam "was provided a full opportunity to prosecute his applications and to appeal the examining attorney's final rejections to the Board." Lastly, the TTAB denied Mr. Tam the registration because he used the mark THE SLANTS in a disparaging manner, not on account of his race. Accordingly, there was no violation of the equal protection clause.
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