Friday, April 24, 2015

Disparaging the Disparagement Doctrine

Remember the Titans. Empowering film about race relations. Remember the Redskins? That trademark registration so famously cancelled in 2014 for disparaging Native Americans, a.k.a., a serious detriment to race relations? 

Well we are back on the issue of disparagement on race lines once again, but not black-white, or Native American-Colonizing American, but Asian-Asian.

You read that right. Asians disparaging Asians is the issue. It's not that simple, though.

Quick recap of the case, In re Tam:
1. Band (comprised of members of Asian descent) files for name "The Slants" with the U.S. Patent & Trademark Office (Application Ser. No. 77/952,263).
2. Application denied for a likelihood of disparagement of persons of Asian descent under Section 2(a) of the Trademark Act.
3. Decision appealed to the Trademark Trial & Appeal Board.
4. Decision upheld for failure to brief, and application deemed abandoned.
5. Band re-files for the name "The Slants" with the USPTO (Application Ser. No. 85/472,044).
6. Decision again rejected on identical grounds.
7. Decision appealed to TTAB, again affirmed, stating "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."
8. Decision appealed to the Court of Appeals for the Federal Circuit, and affirmed.

If a white or black band (or any non-Asian racial group) files for "The Slants," that would rightly be rejected, all day, every day. In that context, "slants" would refer to Asians in a derogatory sense, just like "Redskin" has always been a derogatory reference when used by white Americans to refer to Native Americans.

Important side note: the band, The Slants, would not be prevented from using the name by the Federal Circuit's decision. In fact, nobody would be able to be stopped from using "Redskins" or "Slants" as their trademark, regardless of their race. Rather, it is just that the USPTO, and under some precedents the Federal Courts, would not protect that use from infringment. Though scholars disagree, the relevant USPTO rulings and case law arguably support free speech: the government does not have to protect commercial speech that is disparaging (since commercial speech receives less protection than non-commercial speech), but it also will not bar it from being used. In other words, disparage away, just don't expect to stop others from doing it in a way that's confusingly similar to your use. That was the rationale the Federal Circuit adopted in affirming the denial of the application for registration.

While the Redskins famously lost their protection of the registration, the case for "The Slants" is distinguishable. The Redskins organization is owned by a white man, employs staff and fields a team of few, if any, Native Americans. The Slants band is entirely Asian. There is a particular decision on-point from the PTO, which allowed and registered the mark "Dykes on Bikes" on October 30, 2007 (U.S. Reg. No. 3,323,803). Initially it was refused under a 2(a) finding of disparagement of lesbians. However, because the owners of the mark were themselves lesbians and had significant evidence it was empowering as used by the registrant, the use made by the registrant of "Dykes on Bikes" was found not disparaging.

So what does that mean for The Slants? Well, with supporting evidence of the non-derogatory impact of reappropriation of derogatory terms and of other PTO decisions and registrations (as done in the Dykes on Bikes mark prosecution), I'd posit that the mark should have been allowed to register.

But why?

The Examining Attorney, TTAB, and Federal Circuit were all correct that the use of "The Slants" was clearly referring to persons of Asian descent, is an ethnic slur for Asians, and in the general sense thus disparaging of Asians. In this writer's opinion, however, the focus was entirely misplaced.

American trademark law is all about use. The meaning of a mark is determined by the context of its use. I'll say that again: the meaning of a mark is determined by the context of its use.

The Slants are all Asians. They embrace and champion the derogatory term in an ironic way as a means of reappropriating it to empower Asians. So did the registrants of Dykes on Bikes.

I would like to know the legal distinction from lesbians calling themselves dykes and Asians calling themselves slants.

"The Slants" as used is no different from the "Dykes on Bikes" use. These are Asians using it for positive connotations of being Asian. As the band's website makes plain, not only is the name used positively, ironically, and to reappropriate the "slant" slur, but the music the band produces makes significant commentary on the issue. Therefore, I'd argue the Federal Circuit was wrong. The entire examination focus drove away from that chief rule of trademark analysis: it must always be case-by-case, because it is all about the actual use in commerce. The use as a consumer would encounter the mark "The Slants" in commerce would be one that is indicative of Asian pride and of "retaking" one's racial identity by reappropriation of slurs.

So ask yourself, is this band's use in commerce conveying a meaning of disparagement, or one of empowerment? (Please do feel free to comment - in agreement or not!)