In Case Involving The Name of a Band, The U.S. Supreme Court Rules Disparagement Clause of Lanham Act Unconstitutional

Matal v. Tam, No. 15-1293 (U.S. June 19, 2017)

The United States Supreme Court ruled that the disparagement clause of the Lanham Act was unconstitutional under the Free Speech Clause of the First Amendment.  The disparagement clause of the Lanham Act, Section 2(a), prohibited the registration of trademarks that my, “disparage ... or bring ... into contemp[t] or disrepute” any “persons, living or dead.” 15 U.S.C. §1051(a).

An Asian-American rock band, “The Slants,” were refused registration of their band name based on a 2(a) rejection that “the slants” is a derogatory term for Asians. The Supreme Court held that the disparagement clause was not narrowly drawn enough to prevent trademarks that support discrimination. The court stated that the clause, “reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

Band Refused Trademark Registration For Name "The Slants"

In re Simon Shiao Tam, Serial No. 85472044 (TTAB Sep. 26, 2013).

A band sought to register its name "The Slants" with the U.S. Patent & Trademark Office.  Registration was refused under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that applicant’s mark “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols under Trademark Act Section 2(a).”  The Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney's refusal to register.

The TTAB found, "Thus, it is abundantly clear from the record not only that THE SLANTS, used for the identified services, would have the 'likely meaning' of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances. The evidence of public perception of the meaning of THE SLANTS, as used in connection with applicant’s services, shows that meaning to be a derogatory reference to people of Asian descent."  The TTAB also rejected the applicant's argument that it had "good intentions" (e.g., taking ownership of a disparaging term): "the fact that applicant has good intentions with its use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable".  Lastly, the TTAB found that the record established that the slang term “slant” or its plural “slants,” when used to indicate
ethnicity, is disparaging to a substantial composite of the referenced group.