Written by: Susan Neuberger Weller

Racial and ethnic disparagement is a hot topic at the Trademark Trial and Appeal Board these days. While a decision is still pending in the latest cancellation action involving the long disputed WASHINGTON REDSKINS professional football team marks, the Board in In re Simon Shiao Tam, recently affirmed a federal trademark examiner’s refusal to register THE SLANTS as a mark for an Oregon rock band composed of Asian Americans on grounds that it was a derogatory slang phrase for people of Asian descent.

Section 2(a) of the Trademark Act prohibits registration of any mark which “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  In order to determine whether a mark is “disparaging” under this Section, the Board applies a two-part test, analyzing: (1) the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, police or national symbols, whether that meaning may be disparaging to a substantial composite of the reference group.

In this case, the Board considered evidence consisting of definitions of the word “slant” from various dictionaries and other reference sources, printouts from the band’s own webpage as well as its Wikipedia entry, and online articles reporting on the opinions of various Asian groups and individuals that the term “slant” was a disparaging term referring to Asian people. The band’s own Wikipedia entry stated that the name derived from “an ethnic slur for Asians,” and a band member was quoted as stating “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them.”

In considering the likely meaning of the term, the Board noted that “the nature of the identified services” for which the mark was used were live performances by a musical band. Thus, the Board found that the term “necessarily identifies people, i. e., the live performers,” and those who attended the live performances would necessarily understand THE SLANTS  to refer to the persons who comprised the band. Moreover, it found that the evidence in the case showed that the slang meaning of the word “slants” was actually being touted by the band itself in connection with the services it was offering in the marketplace. Accordingly, the “likely meaning” of the term as used in connection with the services was as a derogatory reference to people of Asian descent. The fact that the band might have good intentions in trying to “own” the term did not, in the Board’s opinion, speak for the entire community of persons of Asian descent since the evidence also demonstrated that a substantial composite of that group found the term objectionable.

It is important to note that the Board only has the authority to prevent federal registration of a trademark. It has no authority, as it made clear in its opinion in this case, to enjoin any use of a mark. Thus, although it could not “call upon the resources of the federal government” in order to obtain the benefits of a federal registration for its mark, the band’s  First Amendment rights were not abridged by this refusal since it could continue to use the mark and claim ownership of unregistered, common-law rights in it. This is also true for the WASHINGTON REDSKINS marks, which have been under fire for many years. Even if the Board cancels these registrations, the marks, which have been in use for a very long time, will continue to benefit from substantial common-law trademark rights developed over decades of use.