Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 85/472,044.
RONALD D. COLEMAN, Goetz Fitzpatrick PLLC, New York, NY, argued for appellant. Also represented by JOEL GEOFFREY MACMULL.
MOLLY R. SILFEN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Michelle K. Lee. Also represented by CHRISTINA HIEBER, THOMAS L. CASAGRANDE, NATHAN K. KELLEY.
Before LOURIE, MOORE, and O'MALLEY, Circuit Judges.
MOORE, Circuit Judge.
Simon Shiao Tam appeals from the decision of the Trademark Trial and Appeal Board (the Board) affirming the examining attorney's refusal to register the mark THE SLANTS because it is disparaging. We affirm.
Mr. Tam is the " front man" for Asian-American dance rock band The Slants. In 2010, Mr. Tam filed Application No. 77/952,263 ('263 application) seeking to register the mark THE SLANTS for " Entertainment, namely, live performances by a musical band." Mr. Tam attached specimens featuring the band name set against Asian motifs to the '263 application. The examining attorney found the mark disparaging to people of Asian descent under 15 U.S.C. § 1052(a) (" § 2(a)" ) and therefore refused to register it. Mr. Tam appealed that refusal to the Board, but the case was dismissed for failure to file a brief and the application was deemed abandoned. On November 14, 2011, six days after the abandonment of the '263 application, Mr. Tam filed a second application (Application No. 85/472,044, or the '044 application) seeking to register the mark THE SLANTS for essentially identical services as in the '263 application. In the '044 application, Mr. Tam claims use of the mark since 2006. Unlike the specimens attached to the '263 application, the specimens attached to the '044 application do not contain Asian motifs. The examining attorney again found the mark THE SLANTS disparaging and declined to register it. In making this determination, the examining attorney cited to materials that he had gathered in response to Mr. Tam's earlier application. Mr. Tam responded and a final office action issued.
The Board affirmed the examining attorney's refusal to register the mark. The Board found that " it is abundantly clear from the record not only that THE SLANTS . . . 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." In re Tam,
No. 85472044, 2013 WL 5498164, at *5 (TTAB Sept. 26, 2013). To support this conclusion, the Board pointed to the band's website, which displayed the mark next to " a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image," and to a statement by Mr. Tam that he selected the mark in order to " own" the stereotype it represents. Tam, 2013 WL 5498164, at *5. The Board also found that the mark is disparaging to a substantial component of people of Asian descent because " [t]he dictionary definitions, reference works, and all other evidence unanimously categorize the word 'slant,' when meaning a person of Asian descent, as disparaging," and because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam's use of the word " slant." Tam, 2013 WL 5498164, at *7. The Board therefore disqualified the mark for registration under § 2(a). Mr. Tam appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4).
Mr. Tam argues that the Board erred in finding the mark THE SLANTS disparaging under § 2(a) of the Lanham Act and therefore unregistrable. Mr. Tam also challenges the constitutionality of § 2(a).
I. Disparagement Analysis
Section 2(a) of the Lanham Act provides that the Patent and Trademark Office (PTO) may refuse to register a trademark 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." 15 U.S.C. § 1052(a). A disparaging mark " 'dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.'" In re Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014) (quoting Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96, 124 (D.D.C. 2003)) (alterations omitted). In Geller, we applied a two-part test to determine if a mark may be disparaging:
(1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
(2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
Id. This determination is " a conclusion of law based upon underlying factual inquiries." Id. We review the Board's factual findings for substantial evidence, and its ultimate conclusion de novo. Id.
A. Use of Prior Applications
As a threshold matter, Mr. Tam argues that the examining attorney and the Board should not have considered evidence gathered by the examining attorney while evaluating the earlier '263 application. We disagree. The examining attorney may look to evidence outside the application, such as dictionary definitions and newspaper articles, when determining the " manner of use" of the mark. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966-69 (Fed. Cir. 2007). Mr. Tam claims use of the mark THE SLANTS back to 2006, before he filed the '263 application.
Evidence gathered in response to the '263 application is relevant to determining the mark's manner of use for the time period during which Mr. Tam asserts the mark was in use. While the evidence gathered during the evaluation of the '263 application derives from an abandoned application dated before the '044 application's filing date, its use was not improper.
B. Likely Meaning
To determine if a mark is disparaging, we first consider " the likely meaning of the matter in question." Geller, 751 F.3d at 1358. The Board found that the mark THE SLANTS refers to people of Asian descent. Substantial evidence supports this finding. Mr. Tam argues that the mark does not refer to people of Asian descent. His argument seems to rely on 1) the fact that the term " slant" has a number of alternative, more common meanings; 2) that none of the specimens attached to the '044 application include Asian imagery or otherwise reference people of Asian descent; and 3) that the PTO has granted a number of unrelated trademark applications containing the term " slant." We are not persuaded by Mr. Tam's argument.
There is no dispute that the term " slants" has a number of meanings, one of which refers to people of Asian descent. The Board cited a number of traditional and slang dictionaries defining the word with reference to people of Asian descent, ranging from Oxford Reference Online to www.urbandictionary.com. Tam, 2013 WL 5498164, at *1-2 & n.3. Even the dictionary entries supplied by Mr. Tam include as possible definitions for the term " slant" " a disparaging term for a person of East Asian birth or ancestry," J.A. 219 ( The American Heritage Dictionary of the English Language ), and " [a] person with slanting eyes, spec. one of Oriental descent," J.A. 234-36 ( Oxford English Dictionary ).
The fact that the term " slants" has some innocuous meanings--and that some trademarks have issued with those innocuous meanings--does not foreclose the possibility that the term may also be used in an offensive manner, even when the non-disparaging meanings are more common. See Tam, 2013 WL 5498164, at *5. Rather, the existence of these other meanings makes it necessary to examine how the applicant uses the mark in the marketplace to determine its likely meaning--as the Board did.
The evidence here supports the Board's finding that the mark THE SLANTS likely refers to people of Asian descent. For example, an article in the record includes a quote attributed to Mr. Tam where he describes the genesis of the band's name by explaining: " I was trying to think of things that people associate with Asians. Obviously, one of the first things people say is that we have slanted eyes. . . ." J.A. 130. The record also contains the band's entry in Wikipedia, which states that the band's name is " derived from an ethnic slur for Asians." J.A. 57. The Wikipedia entry quotes Mr. Tam: " We want to take on these stereotypes that people have about us, like the slanted eyes, and own them. We're very proud of being Asian--we're not going to hide that fact. The reaction from the Asian community has been positive." Id. Furthermore, the record includes an image from the band's website in which the mark THE SLANTS is set against " a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image," as described by the Board. Tam, 2013 WL 5498164, at *2, 5 (citing J.A. 59). Finally, the record includes evidence that both individuals and Asian groups have perceived the term as referring to people of Asian
descent. Tam, 2013 WL 5498164, at *2-3 (citing, e.g., J.A. 95 (" [Mr. Tam] was initially slated to give the keynote address at the 2009 Asian American Youth Leadership Conference in Portland. But some conference supporters and attendees felt the name of the band was offensive and racist, and out of respect for these opinions the conference organizers decided to choose someone less controversial." )). On this record, we find that substantial evidence supports the Board's determination that the mark THE SLANTS likely refers to people of Asian descent.
Mr. Tam also argues that we should not consider this evidence because it is unauthenticated hearsay and does not satisfy the requirements of 37 C.F.R. § 2.122(a), which applies the Federal Rules of Evidence to inter partes proceedings. However, § 2.122(a) does not apply to ex parte proceedings. For ex parte proceedings, the Board has adopted a " somewhat more permissive stance with respect to the admissibility and probative value of evidence." Trademark Trial & Appeal Board Manual of Procedure § 1208. In ex parte proceedings, the Board permits the examining attorney to consider Internet material. Id. § 1208.03. We see no error in the Board's procedures.
C. Whether the Meaning May Be Disparaging to a Substantial Composite of the Referenced Group
If the likely meaning of the mark " is found to refer to identifiable persons, institutions, beliefs or national symbols," we next consider " whether that meaning may be disparaging to a substantial composite of the referenced group." Geller, 751 F.3d at 1360. Substantial evidence supports the Board's finding that the mark THE SLANTS is likely offensive to a substantial composite of people of Asian descent.
First, the definitions in evidence universally characterize the word " slant" as disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent. Tam, 2013 WL 5498164, at *1-2, 7 & n.3. This includes the dictionaries provided by Mr. Tam in his response to office action. J.A. 219, 234-36. Additionally, the record includes a brochure published by the Japanese American Citizens League describing the term " slant," when used to refer to people of Asian descent, as a " derogatory term" that is " demeaning" and " cripple[s] the spirit." J.A. 48-49. The record also includes news articles and blog posts discussing the offensive nature of the band's name, which led to the cancellation of the band's scheduled performance at a conference for Asian youth. Tam, 2013 WL 5498164, at *2-3 (citing J.A. 45, 51, 94-98, 100). We find there is substantial evidence--even without a marketing survey or some other quantitative measure of the term's offensiveness--supporting the Board's finding that the mark is disparaging to a substantial composite of people of Asian descent. The Board does not have the resources, nor is it required, to conduct a marketing survey each time it evaluates whether a term is disparaging. See In re Loew's Theatres, Inc., 769 F.2d 764, 768 (Fed. Cir. 1985).
II. Constitutionality of § 2(a)
Having affirmed the Board's holding that the mark is disparaging, we next turn to Mr. Tam's constitutional challenges.
A. First Amendment
Mr. Tam argues that the Lanham Act's restrictions on disparaging trademarks are unconstitutional under the First Amendment both facially and as applied to his case because § 2(a) conditions a benefit--trademark ...