Simon Shiao Tam is the founder of The Slants, an all-Asian American, post-punk revival band based in California. But whatever fame Tam has achieved as a musician may well be exceeded by his impact on trademark law.
In November 2011, Tam filed an application in the US Patent and Trademark Office (“USPTO”) to register “The Slants” as a trademark for “entertainment in the nature of live performances by a musical band”. Registration was refused under the section of the Lanham Act that prohibits registration where the proposed mark would tend to disparage people, institutions, beliefs or national symbols. In other words, registration was refused because the mark was deemed to be derogatory with respect to Asians.
Tam appealed to the refusal to the Trademark Trial and Appeal Board (“TTAB”), which affirmed the refusal to register. Tam then appealed to the Federal Circuit Court of Appeals in Washington, DC, the court of first impression for appeals from decisions of the TTAB.
The Appeals Court reversed the TTAB, finding that the refusal to register Tam’s trademark violated Tam’s First Amendment right to free speech. The USPTO appealed that decision to the US Supreme Court. The court heard oral arguments in January of this year, and a decision will be handed down before the current term of the court ends in October 2017.
The Supreme Court Decision
A Supreme Court decision in favor of Tam could blow an enormous hole in the US system of trademark registration. The USPTO may bar registration of a trademark for any number of reasons, in addition to disparagement. Registration will be refused for marks that are deemed to be descriptive or miss-descriptive; geographically descriptive or geographically miss-descriptive; consist of a flag or emblem of the United States or other governmental entity; consist of the name, likeness or signature of a living person who has not consented to their use, or are confusingly similar to another trademark.
Examination of a trademark, whether to determine if it is disparaging, or descriptive, is content-based, and therefore, implicates the right of free speech; the USPTO tells you what you may or may not “say” when you create your trademark.
The Purpose is to Minimize Confusion of Consumers
But the purpose of trademarks is not to foster public debate; the purpose is to minimize confusion or uncertainty in the minds of buyers of goods and services. A trademark is a government-issued license to suppress the speech of others in the interest of identifying for buyers the source of goods and services. If I am the seller of Acme wing nuts, both me, and potential purchasers of Acme wing nuts, have an interest in identifying the genuine article. A unique identifier serves that purpose, but a unique identifier, by its very nature, precludes any other seller of wing nuts from using the word “Acme” as a registered trademark applied to wing nuts.
If Tam prevails, the ramifications will extend far beyond extending trademark protection to marks that are demeaning or otherwise nasty. Because the examination of every trademark necessarily involves an examination of content, a decision that invalidates a content-based examination for disparagement could well be applied where the examination is to determine whether a mark is unique, or descriptive or deceptive, and that has the potential for upending trademark law.
I’m betting that Tam will lose.
His band has been calling itself The Slants for about 10 years, and no one has tried to make him change the name, not even the USPTO. The USPTO has merely said that Tam’s trademark is not entitled to the specific benefits conferred by registration, and that anyone seeking those specific benefits must be willing to accept the content-based evaluation that is fundamental to a determination of what can be registered as a trademark.