Federal Circuit To Hear TTAB Appeal En Banc Concerning Denial Of Registration For Mark "THE SLANTS" That Was Found To Be Disparaging

In re Tam, ___ F.___ (Fed. Cir. Apr. 20, 2015) (Lourie, MOORE, O'Malley), reh'g en banc granted __ F.3d __ (Fed. Cir. Apr. 27, 2015) (T.T.A.B.) (2 of 5 stars)

On April 20, 2015, the Federal Circuit affirmed decision refusing registration of the mark "THE SLANTS" over appellant's objections that the mark is not disparaging and that the refusal to register violates the First Amendment.

Disparagement Analysis of 15 U.S.C. sec. 1052(a): The proposed mark was disparaging under the In re Geller, 751 F.3d 135 (Fed. Cir. 2014) analysis, which determines (1) the likely meaning of the matter in question, and (2) whether the meaning may be disparaging to a substantial composite of the referenced group. As a threshold matter, it was not improper for the examiner to use evidence outside the record of the trademark application.

Under the "likely meaning" prong, the evidence, including dictionary definitions and the applicant's use of THE SLANTS in the market (including a stylized image of THE SLANTS against "a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image"), supported the Board's determination that the mark likely refers to people of Asian descent. Moreover, evidence from dictionaries and brochures referring to "slant" as derogatory, demeaning, and offensive was sufficient to determine that THE SLANTS was disparaging to a substantial composite of Asians.

Constitutionality of 15 U.S.C. sec. 1052(a): Federal Circuit denied Mr. Tam's First Amendment challenge to the constitutionality of sec. 2(a). Under In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), "refusal to register a mark has no bearing on the applicant's ability to use the mark . . . sec. 1052(a) does not implicate the First Amendment rights of trademark applicants." Federal Circuit also determined that sec. 2(a), through application of the Geller test, was not unconstitutionally vague and that Mr. Tam's due process and equal protection rights were not violated.

Additional Views (J. Moore): Judge Moore believes that sec. 2(a) violates the First Amendment and that McGinley should be revisited. In her view, (1) trademarks are protected commercial speech and (2) sec. 2(a)'s content-based restrictions on registerability have a chilling effect on speech. Further, Judge Moore suggests that the government has not presented any substantial government interest to justify the PTO's refusal to register disparaging marks. As such, her view is that sec. 2(a) cannot satisfy the Supreme Court's Central Hudson framework for determining the constitutionality of commercial speech restrictions.

NOTE: On April 27, 2015, the Federal Circuit sua sponte decided to consider en banc whether the statutory bar on registering disparaging marks violates the First Amendment.

Authors: Cherylyn Esoy Mizzo, Adam Shartzer