by Last Monday, April 20th, a Federal Circuit panel upheld the U.S. Patent and Trademark Office’s denial of a trademark registration for Portland, Oregon-based Asian-American dance-rock band, The Slants, because it is offensive to people of Asian descent. Following the three-person panel’s decision, The U.S. Court of Appeals for the Federal Circuit said it was issuing a Sua Sponte order, vacating the panel’s decision to uphold the U.S. Patent and Trademark Office’s refusal to trademark the band’s name.
This decision reinstated The Slants’ original appeal, and The U.S. Court of Appeals of the Federal Circuit will now hear the case en banc (in front of all the judges, not a select panel) regarding the constitutionality of the Trademark Office’s decision.
Comprised of Simon Young (bass), Tyler Chen (drums), Will Moore (lead guitar), Thai Dao (guitar/keys), and Ken Shima (vocals), the quintet has tried for years to trademark “The Slants,” but has been rejected twice by the U.S. Patent and Trademark Office.
Band founder and leader Simon Tam (who’s stage name is Simon Young) formally applied for a trademark in 2010, but a trademark examiner rejected the application, saying that a substantial portion of the Asian-American community would be offended. Tam tried again in 2011, dropping the “reclaiming a stereotype” position and arguing that there is nothing inherently racist about the word “slants.” The same trademark examiner again rejected the application.
“I consider the name a point of cultural pride,” he continues. “One of the first things people say is that we have slanted eyes. I thought, ‘What a great way to reclaim that stereotype and take ownership of it,’ and, in doing so, take away the power from those who try to use it as a term of hate. Our band uses our name to refer to our perspectives and experiences in life as people of color. It’s our “slant,” if you will – and we choose to empower others that way.”
Following the U.S. Patent and Trademark Office’s decision, The Slants’ took their case to the U.S. appeals court, which ruled last Monday that The Slants’ couldn’t trademark their name, because it is disparaging.
“I’m deeply disappointed, but not entirely surprised,” said Tam regarding the decision. “We’ve been fighting this battle for nearly six years and I knew that this wouldn’t be easy. However, I think it is terrible that the Trademark Office can easily dismiss the opinions of Asian Americans on the issues without actually talking to anyone in our community.”
Judge Kimberly Moore also wrote an unprecedented twenty-three page separate opinion entitled “Additional Views,” which questions the constitutionality of Section 2(a) of the Lanham Act, the law which has been used to justify the denial of The Slants’ registration. She states, “Trademarks – which are applied to private goods to identify the source of the goods for consumers – are private speech, not ‘government speech.’” And while she continues to affirm that The Slants can still keep the band name, they have to do so without the substantive benefits of a trademark registration
“Not only do they frame our very quotes out of context, but they persist in using misinformation,” explains Tam. “For example, they incorrectly state that a band performance at an Asian American conference was cancelled due to controversy over our name. However, in 2010, a signed declaration was provided by a member of the steering committee, the organization in question, who stated, they ‘would not be able to accommodate The Slants’ performance logistically due to a limited budget. The decision was not in any way based on the band’s name.’ Furthermore, the band’s name was printed in the program with no complaints by the community – and the band performed in subsequent years without any issues. Despite this, the Trademark Office continued deliberately use the false information in numerous rejections and even in the oral arguments presented before the Federal Circuit in 2015.”
“The Trademark Office and Federal Circuit continues to misreport that the Japanese American Citizens Alliance also has issues with the name by using an outdated brochure, despite receiving signed letters of support from prominent members and vocal support through Pacific Citizen, the organization’s national publication,” he continues. “They write, ‘In the past, the word slant is considered an outdated term to the band and other community members. The long-held racial slur against Asian Americans is now a source of empowerment and change.’”
Since 2007, The Slants have performed at over seven hundred events across North America, including headlining appearances at Asian American festivals and conferences in dozens of states, without a single formal complaint. Additionally, the band has raised over $1,000,000.00 (one million dollars) for charitable organizations, used their influence to help increase voting rates in the Asian Pacific Islander community, and leads workshops on Asian American issues across the country.
Furthermore, Tam has been the keynote presenter at numerous Asian American social justice conventions. He has also delivered several TED talks discussing the social justice and activism. Both Tam and the band has received numerous accolades for their antiracism work.
“The recent decision seems to be politically driven, with no actual consideration of the context of how is used,” comments Tam. “The Trademark Office inappropriately used my race when making their decision, they cherry-picked definitions in racial slur databases instead of using contemporary dictionaries, and they misquoted me as well as multiple Asian American organizations that have proudly supported us for nearly a decade now. They should be held accountable for these actions. One thing is clear: we will not back down. This is much bigger than our band. It’s about the principle. This is about doing what is right – not just for us, but for all marginalized communities who have faced administrative battles cause by a lack of cultural competency.”
The Federal Court’s decision to issue a Sua Sponte order vacating the panel’s decision is historical because this Court of Appeals almost never revisits issues by its own doing (sua sponte). Usually, rehearing en banc has to be filed by a party (and even then, it is rarely granted). Finally, the court rarely discusses constitutional issues (they usually focus on procedural ones), so this is incredibly rare.
Twelve judges will now decide whether Section 2(a) of the Lanham Act is constitutional or not, and if the Trademark Office’s denial for a trademark was constitutional, linking The Slants’ case directly with the First Amendment of the Constitution.
