Tim Lince

In the couple of weeks since Asian-American rock band The Slants clinched an appeal court victory in its fight to obtain a trademark registration for its name, media analysis has broadly focused on the implications for the ongoing court battle of the Washington Redskins against cancellation of a number of its registrations. However, band founder Simon Tam laments that commentators are missing the bigger story.

The long-running saga of The Slants’ attempt to trademark its name may finally be nearing an end. Musician, author and activist Simon Tam founded the band in 2006, and has explained in the past that the name is "a healthy reappropriation of a term usually considered a slur”. He originally filed a trademark for the name in 2010, but the application was rejected by the USPTO for being ‘offensive to people of Asian descent’. A three-judge appeal decision upheld that decision back in April, but one of the judges on the panel - Judge Kimberly Moore - wrote a lengthy dissent that questioned whether the precedent governing the treatment of disparaging marks - In re McGinley - violated the First Amendment. Subsequently, the US Court of Appeals for the Federal Circuit issued a sua sponte order vacating its April 20 2015 opinion.

On December 22, the appeals court held section 2(a) of the Lanham Act, which bars the federal registration of trademarks that consist of or comprise “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”, is unconstitutional.

Much of the media coverage of the decision has focused on how it will affect the ongoing Washington Redskins appeal against the cancellation of six of its trademarks. The New York Times reports that it will “help” the Redskins case, the Huffington Post states that it was a “huge boost” for the NFL team’s cause and the National Law Journal claims it gave the club “an early Christmas present”. For Tam, that much of the coverage has ignored the fact that In re Tam is an important legal decision in its own right has been an ongoing cause of frustration. He told World Trademark Review: “In some ways, the victory was absolutely incredible: to know that we've been able to make this kind of difference on an antiquated (and ineffective) law is very humbling. In other ways, it feels anti-climactic. After nearly six years of work, news of the decision exploded on Twitter but it was almost entirely reframed as a win for the Washington Redskins rather than a win for free speech.”

Tam expands: “Most of the reactions have seemed opportunistic: headlines have become fodder for clickbait, and analysis has been weak at best. Most people writing and commenting on the case have little knowledge of the history of the Lanham Act or the details of my case. For most, they wanted to compare it to the most familiar case to them, the Redskins. Our win doesn't guarantee victory for the NFL team. It certainly may influence it, but even if it does, it is an important legal decision in its own right. The media should focus on what matters most: that another law which has been justifying the denial of rights based on race has been revoked, trademark owners are able to secure better protection for their marks, and that the market (rather than government) gets more control. If their team name wasn't even in the picture, what would the media or legal community write about? The expansion of rights, the recognition of reappropriation as an important form of political speech - the larger story of what we've been fighting about. That seems more newsworthy to me.”

While Tam expanded on these thoughts on the official website of The Slants, comparisons to the Redskins case were inevitable, and indeed if the decision was the reverse, headlines would no doubt have claimed it was a ‘blow’ to the NFL club. But Tam’s attorney, Ron Coleman of New Jersey-based firm Archer & Greiner, is similarly at pains to point out the differences between the two cases . For instance, that the Slants case is based on a First Amendment argument while the Redskins case is focusing on a Fifth Amendment argument about government seizure of property. Furthermore, of course, Tam is fighting to register a trademark, the Washington Redskins are dealing with the cancellation of trademarks.

Coleman does say, however, that he likes to consider the implications of the decision beyond the Lanham Act: “My opinions about ‘implications’ of the decision beyond disparaging marks are ultimately of no more significance than those of the fellow on the next barstool. We were at pains to brief and argue only the narrow question the court asked us. As it is, the disparagement provision has its own set of unique and problematic First Amendment problems that were more than enough to keep the court busy for 110 pages. Most of the problems addressed in the opinion do seem specific to disparaging marks, except perhaps the vagueness issues raised in the opinion, which we did address in our submissions as well and which are well known to practitioners… [However] it is hard, if you’re a political economy major like me, not to want to extend the discussion beyond mere trademarks. Is government in general - not just the PTO - really where society should turn to fine-tune ethnic and racial relations? I am not suggesting the circuit court had any intention of addressing that question or that such a matter could be addressed if In re Tam were reviewed by the Supreme Court.”

The next step for Tam and Coleman is to wait 90 days from the December 22 decision to see if the US government will appeal the issue to the Supreme Court. If they do, it means the pair will be back in court fighting for the case once again.

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You can read extended comments from Simon Tam and Ron Coleman in a dedicated feature in an upcoming issue of World Trademark Review. In the meantime, you can listen to our discussion with Tam about the case from episode six of the World Trademark Review Podcast.

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