An Asian-American rock band called The Slants has taken a legal fight over its name all the way to an appeals court, resulting in a major decision over trademark rights.

The Trademark Trial and Appeal Board (TTAB) denied The Slants a trademark registration under an old section of trademark law that denies trademark registration to marks that the US Patent and Trademark Office considers disparaging. Now, the US Court of Appeals for the Federal Circuit, sitting en banc, has struck down not just the USPTO decision about The Slants, but the entire section of the Lanham Act that bars "disparaging" trademarks.

The decision is sure to have repercussions for other owners of controversial trademarks—most notably, the Washington Redskins, a team that was stripped of its trademark rights but is continuing its fight at the US Court of Appeals for the 4th Circuit.

"Courts have been slow to appreciate the expressive power of trademarks," wrote US Circuit Judge Kimberly Moore in the majority opinion (PDF). "Words—even a single word—can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country.... Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech."

Tam, the front man for the dance-rock band, has said he chose the mark to "own" the stereotype and has said that reaction from the Asian community has been "very positive."

The law in question, section 2(a) of the Lanham Act, includes a "hodgepodge of restrictions," Moore noted. "Among them is the bar on registration of a mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

"It cannot reasonably be argued that this is not a content-based restriction," wrote Moore. "The government enacted § 2(a), and defends it today, because it is hostile to the messages conveyed by the refused marks. Section 2(a) is a viewpoint-discriminatory regulation of speech, created and applied in order to stifle the use of certain disfavored messages."

Under PTO rules, trademark examiners consider the "likely meaning" of the mark, then determine if that meaning "may be disparaging to a substantial composite of the referenced group." Those rules led to puzzling and differing results, "rife with inconsistency," Moore noted.

For instance, PTO denied the mark HAVE YOU HEARD SATAN IS A REPUBLICAN because it disparaged the Republican Party but didn't find the mark THE DEVIL IS A DEMOCRAT disparaging. The office rejected registration for FAG FOREVER A GENIUS! and MARRIAGE IS FOR FAGS but accepted the mark F*A*G FABULOUS AND GAY. (More examples below.)

Trademark: speech vs. subsidy

The government defended the statute, pointing out that denial of trademark registration isn't equivalent to denying someone the right to speak. There's no one and nothing that can stop Tam from calling his band "The Slants." The government is simply refusing to register it as a trademark, which would give Tam the right to stop others from using the term "The Slants."

Government lawyers argued that trademark registration should actually be viewed as a subsidy program, not an expressive act of speech.

Even on those terms, though, Moore and the majority viewed the disparagement rule as imposing content-based regulation of that "subsidy" program. Just as the First Amendment bars the government from imposing speech-prohibiting laws, it can't dole out benefits to different parties by looking at the content of their speech.

"Here, too, § 2(a) burdens some speakers and benefits others," she concluded. "Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content."

The full panel of Federal Circuit judges considered the case. Eleven judges agreed that the disparagement rule was unconstitutional, with nine of them signing on to Moore's majority opinion and two writing a concurring opinion that actually slammed 2(a) as being in violation of the First Amendment as well as "unconstitutionally vague."

Three judges dissented, arguing that Tam should be granted his individual trademark registration but that the statute shouldn't be thrown out as unconstitutional on its face.

"The statute is designed to preclude the use of government resources not when the government disagrees with a trademark’s message, but

rather when its meaning 'may be disparaging to a substantial composite of the referenced group,'" wrote Judge Timothy Dyk. "The purpose of the statute is to protect underrepresented groups in our society from being bombarded with demeaning messages in commercial advertising... My answer is that the statute is constitutional as applied to purely commercial trademarks, but not as to core political speech, of which Mr. Tam’s mark is one example."

"This is a historic moment—not only for our band who has been fighting the legal system for nearly six years—but for all Americans, especially artists, nonprofits, and small business owners who have wrongfully had their free speech rights abridged," wrote Tam on The Slants' Facebook page. "We’re thrilled that the court recognizes not only our legitimate business practices, but our expressive and political speech as well, which lies at the heart of the First Amendment."

The next step is for the government to decide if it wants to appeal the issue to the Supreme Court. If the 4th Circuit considers the Redskins case and has a different view than the one the Federal Circuit expressed yesterday, there's a decent chance the high court could take up the issue.

Patently Offensive

The list of trademarks that have been debated as possibly disparaging is fascinating. Moore lists a batch of rejected trademarks, beginning with the still-being-litigated Redskins mark. Marks also found disparaging include:

STOP THE ISLAMISATION OF AMERICA, In re Geller, 751 F.3d 1355 (Fed. Cir. 2014); THE CHRISTIAN PROSTITUTE (2013); AMISHHOMO (2013); MORMON WHISKEY (2012); KHORAN for wine, In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215 (T.T.A.B. Mar. 4, 2010); HAVE YOU HEARD THAT SATAN IS A REPUBLICAN? (2010); RIDE HARD RETARD (2009); ABORT THE REPUBLICANS (2009); HEEB, In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071 (T.T.A.B. Nov. 26, 2008); SEX ROD, Bos. Red Sox Baseball Club L.P. v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. Sept. 9, 2008) (sustaining an opposition on multiple grounds, including disparagement); MARRIAGE IS FOR FAGS (2008); DEMOCRATS SHOULDN’T BREED (2007); REPUBLICANS SHOULDN’T BREED (2007); 2 DYKE MINIMUM (2007); WET BAC/WET B.A.C. (2007); URBAN INJUN (2007); SQUAW VALLEY, In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264 (T.T.A.B. June 2, 2006); DON’T BE A WET BACK (2006); FAGDOG (2003); N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS (1996); a mark depicting a defecating dog, Greyhound Corp. v. Both Worlds, Inc., 6 U.S.P.Q.2d 1635 (T.T.A.B. Mar. 30, 1988) (found to disparage Greyhound’s trademarked running dog logo); an image consisting of the national symbol of the Soviet Union with an “X” over it, In re Anti-Communist World Freedom Cong., Inc., 161 U.S.P.Q. 304 (T.T.A.B. Feb. 24, 1969); DOUGH-BOY for “a prophylactic preparation for the prevention of venereal diseases,” Doughboy Indus., Inc. v. Reese Chem. Co., 88 U.S.P.Q. 227 (T.T.A.B. Jan. 25, 1951).

Some potentially offensive marks that weren't barred include DANGEROUS NEGRO (shirts), CELEBRETARDS, STINKY GRINGO, MIDGET-MAN (condoms), and OFF-WHITE TRASH.

More examples of terms that are potentially offensive, yet received trademark registration, can be found in the Redskins' 4th Circuit appeal brief (PDF), filed in October. Lawyers for the team point out that the PTO has registered "hundreds if not thousands of marks that the Team believes are racist, or misogynistic, vulgar or otherwise offensive," including: Take Yo Panties Off clothing, Dangerous Negro shirts, SlutsSeeker dating services, Dago Swagg clothing, Dumb Blonde beer, Twatty Girl cartoons, Baked By A Negro bakery goods, Big Titty Blend coffee, Retardipedia website, Midget-Man condoms and inflatable sex dolls, and Jizz underwear.