Disparaging trademarks – can they be registered?

Under Federal law, the U.S. Patent and Trademark Office (USPTO) will not register a trademark that is disparaging to others.  A member of a Portland based band of Asian-Americans filed an application for its name “The Slants”. The USPTO’s trademark examining attorney assigned to the application refused the application on the grounds that the name of the band was disparaging to Asian-Americans. The USPTO’s Trademark Trial and Appeal Board upheld the refusal.

The Slants’ band member, Simon Tam, appealed to the U.S. Court of Appeals for the Federal Circuit. The three judge panel of the Federal Circuit in In Re Tam held that the USPTO was correct in the refusal. The court applied a two-prong test under applicable trademark law (15 U.S.C. 1052(a)) and determined that (1) the name was disparaging to Asian-Americans under its commonly understood meaning, and (2) was offensive to a large composite of persons of Asian-American descent.

Tam also argued that the refusal was an unconstitutional violation of the band’s 1st Amendment free speech rights.  The court held, as have past rulings, that the refusal to register a trademark does not stop the trademark owner from using the trademark.  So, the trademark owner’s free speech rights are not harmed.  However, a judge in the opinion asked that the entire Federal Circuit hear the case specifically on the (which is called an en banc review).  The Federal Circuit agreed and will now hear the case.

This case has implications for a number of pending cases and potential cases, particularly the Washington Redskins case which is now being appealed.