Asian-American Band Continues to be Denied Trademark Registration for “The Slants”

“The Slants” is a Seattle-based band composed primarily of members of Asian-American descent. According to the band, their desire was “to take on these stereotypes that people have about us, like the slanted eyes, and own them.” They have been using the name since 2006 and claim to have a large Asian-American following.

When the band decided to embark on a national tour, they felt it necessary to protect their intellectual property and file a trademark application with the USPTO. However, the proposed trademark has been denied repeatedly with the latest refusal from the TTAB being issued on September 26, 2013. On November 22, 2013, the applicant filed a Notice of Appeal to the Court of Appeals for the Federal Circuit.

Attempting to register “The Slants” has been a long road that began in March 2010 when Simon Shiao Tam, the band’s founder, filed an application for “entertainment in the nature of live performance by a musical band.” This application was later abandoned on November 8, 2011 and a second application containing the same information was filed on November 14, just 6 days later.

This application was refused on January 6, 2012 and Tam filed a response to this Office Action on May 29, 2012. The Final Office Action was issued on June 20, 2012, refusing registration. Tam then chose to proceed by filing a Notice of Appeal and requesting reconsideration on Dec. 10, 2012, an action which was refused 10 days later. An Appeal Brief was submitted on February 19, 2013 and the Board again denied registration of the mark on September 26, 2013.

In each refusal, the examiner cited 15 U.S.C.A. § 1052(a) stating that the proposed mark could be perceived to “disparage or falsely suggest a connection with persons…or bring them into contempt, or disrepute.”

The band has repeatedly argued against this disparagement classification. “We’re very proud of being Asian—we’re not going to hide that fact. The reaction from the Asian community has been positive.” The band members contend that the mark is not inherently disparaging, nor are there any additional elements to make it so. In the appeal, the band cited a variety of definitions that are available for the term “slants.” They also pointed out that during this time, other registrations containing the word “slant” were issued, even to non-Asians. Tam sought to distinguish this situation from those which involved “inherently offensive slurs such as HEEB, SQUAW or REDSKIN.”

In its request for reconsideration, the band pointed to the fact that the refusals were the result of what the examiner deemed to be past disparaging use of the mark by these particular individuals. Based on this allegedly incorrect standard, the brief claimed that this Applicant would never be able to overcome this “stain” and receive registration. This misuse was based on information obtained on the Internet and the previous application, according to the Applicant.

In its final ruling, the Board stated “while applicant may not find the term [disparaging], applicant does not speak for the entire community of persons of Asian descent and the evidence indicates that there is still a substantial composite of persons who find the term in the applied-for mark offensive.”

There are several other recent applications and/or registrations that related to disparaging marks including Heeb Media, Washington Redskins and Dykes on Bikes. While in some cases, these marks are found to not be disparaging when used by the individual or group that it is used to describe, that is not always the case.

For more information:

• In re Simon Shiao Tam, Court of Appeals Docket #14-1203
• In re Simon Shiao Tam, No. 85472044 (TTAB 2013).
• In re Heeb Media LLC, 89 U.S.P.Q.2d 1071 (TTAB 2008).
• In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264 (TTAB 2006).
• Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (TTAB 1999).