Recently, I had the pleasure of attending the Defense Research Institute (DRI) Intellectual Property Litigation seminar in Denver, Colorado. Simon Tam was one of the featured speakers and he spoke about his journey to the U.S. Supreme Court in the case of Tam v Matal. (See blog article Disparaging Words and ‘The Slants’ on March 8, 2018)
Simon Tam and his legal teams were the persistent force that led to the U.S. Supreme Court issuing a unanimous decision declaring the Disparagement Clause in the Lanham Act unconstitutional after over 70 years. Since 1946, this clause prohibited the registration of trademarks that may “disparage . . . or bring . . . into contempt or disrepute” any “persons, living or dead.” 15 U.S.C. §1052(a).
When Simon Tam started the journey with a trademark application for a word mark in one class, he had no idea that it would take more than seven years and numerous lawyers and trademark experts to finally obtain a trademark registration for one mark in one class. Most individuals and businesses would not have the patience or money to take on a legal battle like this one.
Listening to Simon Tam speak about his experiences along the way and his motivation to make positive change was very inspiring. His battle with the USPTO brought a great deal of notoriety to THE SLANTS and Simon Tam. They have played their music in every possible venue, including prisons where gangs of white supremacists were in the audience. They are spreading their positive message against racial bias everywhere they play and speak.
If you get a chance to listen to Simon Tam speak about his experience, take the time to listen. Here is a summary of his journey from trademark application to the U.S. Supreme Court.
A Rejected Trademark Application
Simon Tam filed his first trademark application in March 2010 for the word mark “THE SLANTS” in Class 41 for entertainment, namely, live performances by a musical band. He included a flyer about the band and pages from the band’s website as specimens of the mark being used in commerce.
When the United States Patent and Trademark Office refused to register the mark based on the Disparagement Clause, the trademark examining attorney cited the definition of “slants” in the online Urban Dictionary, a list of ethnic slurs in Wikipedia, the Online Etymology Dictionary, news articles about “The Slants” in which Simon Tam is quoted, “Most of the people who find our name racist aren’t even Asian! We’re saying to the world ‘We’re proud of who we are, we aren’t going to hide it.’ In fact, our biggest support has been from the Asian community itself.” There were also two separate articles in which Miley Cyrus and a team of Spanish athletes posed in separate photos where they are seen pulling back the skin around their eyelids with smiles on their faces. The articles talked about the racist pose which was deemed offensive by some members in the international community.
The band members, led by Simon Shiao Tam, were all Asian-Americans. They believed that by using the derogatory term for their band name they would reclaim the term and drain it of its negative force. The Slants thought they could change the minds of the examining attorneys by providing documented evidence that the word “slants” was no longer considered negative and disparaging. “The Slants” were a positive force against racial bias, but they soon discovered they were on a long journey against institutional bias.
Simon Tam responded to the USPTO’s refusal by filing a forty-three-page response that included sixteen exhibits. The sixteen exhibits included Affidavits from prominent members of the Asian-American community and articles about The Slants. All of the exhibits demonstrated that members of the Asian-American community did not find the mark, THE SLANTS, disparaging. They also quoted the Trademark Trial and Appeal Board and argued:
Because the guidelines are somewhat vague and because the determination is so highly subjective, we are included to resolve doubts on the issue of whether a mark is . . . disparaging in favor of the applicant and pass the mark for publication with the knowledge that if a group does find the mark to be . . . disparaging, an opposition proceeding can be brought and a more complete record established. In re Over Our Heads, Inc., 16 USPQ2d (BNA) 1653, 1654-55 (TTAB 1990)
The USPTO still refused to approve the application despite Simon Tam’s evidence and arguments that “the slants” was not disparaging.
A New Approach
Simon Tam took a different tact, filing a new trademark application in November 2011. This time, he did not include any photographs of the band members. He only included flyers about the band’s performances.
The same trademark examining attorney was assigned to examine the application. An office action (refusal) was issued and the same dictionary definitions, news articles, and arguments pertaining to the disparagement clause were used. In addition, the examining attorney included news articles about how some people still considered the word “slants” to be offensive. News articles about THE SLANTS fighting the USPTO over the registration of THE SLANTS were also included.
THE SLANTS legal team responded to three Office Actions and then appealed to the Trademark Trial and Appeal Board (TTAB) in December 2012. The TTAB affirmed the decision of the trademark examining attorney. So Simon Tam appealed to the U.S. Court of Appeals for the Federal Circuit.
The Circuit Court of Appeals for the Federal Circuit held that:
The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech. We therefore vacate the Trademark Trial and Appeal Board’s (“Board”) holding that Mr. Tam’s mark is registrable, and remand this case to the Board for further proceedings.
In re Tam, 808 F.3d 1321 (Fed. Cir. December 2015)
A Final Decision from the U.S. Supreme Court
The USPTO appealed the decision by the CAFC to the U.S. Supreme Court. On June 19, 2017, the U.S. Supreme Court in a unanimous decision affirmed the decision of the CAFC.
The opinion of Justice Kennedy stated:
A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.
Matal v. Tam, 137 S. Ct. 1744, 1769 (2017) (Kennedy, S., concurring in part and concurring in the judgment in which Justices Ginsburg, Sotomayer, and Kagan joined)
The history of this case reflects the determination of a small group of young men who were trying to overcome the racial injustice that they experienced throughout their lives. Their battle with the USPTO included a team of lawyers and experts who all eventually donated their time (pro bono) to the cases. THE SLANTS wanted to create positive change against racial bias through their music and performances, and they ended up not only accomplishing that but also successfully overturning the Disparagement Clause of the Lanham Act and eliminating an institutional barrier to free speech.