When Chinatown dance-rock bank The Slants wanted to trademark their name, they didn’t imagine any problems. After all, they were the only band with that name. But the United States Patent and Trademark Office (USPTO) saw things differently and denied their application.
The USPTO ruled that “The Slants” name “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage.” In this case, the ruling was in reference to the term “slant” as a derogatory term for someone of Asian descent.
What constitutes disparaging, immoral, or scandalous matter according to the USPTO? Read on.
Controversies Over Potentially Disparaging, Immoral, or Scandalous Marks
From time to time, the USPTO is faced with the possibility that a potential trademark contains “immoral, deceptive, or scandalous matter” or may be disparaging to “people, institutions, beliefs, or national symbols.” This language comes from Section 2(a) of the 1946 Lanham Act (also called The Trademark Act) and is a “relatively uncommon” reason cited for trademark denial according to Cynthia Lynch, administrator for trademark policy and procedure.
That said, when the issue comes up, it does tend to make the news; the subjective words in the statute mean that marks are each judged on an individual basis, and controversial decisions often result.
Marijuana-related products, for instance, have consistently been denied trademark protection under this statutory provision (despite the fact that the USPTO actually created a goods and services category for medical marijuana in 2010 before removing it from its website just three months later). On the other hand, the National Football League’s Washington Redskins were allowed to register their name as a trademark even though Native American groups have actively protested it.
Besides Statutory Language, What Are USPTO Decisions Based On?
Section 1203.01 of the Trademark Manual of Examining Procedure (TMEP) requires that examiners who find a proposed trademark unacceptable “provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace.” Such evidence may include “dictionary definitions, newspaper articles, and magazine articles.”
The Slants are an Asian-American band, with a largely Asian-American following. Its position is that the USPTO did not adequately consider the “relevant marketplace” and “context of contemporary attitudes.” The band and its supporters argue that the term “slant” is widely used in the API community and that the name celebrates Asian identity rather than disparaging it.
Lesbian motorcycle group Dykes on Bikes used a similar argument to win over the USPTO after a years-long battle regarding the right to trademark its name:
“The applicant came in at the last moment with a lot of evidence to show that the community did not consider it disparaging,” said Lynne Beresford, a U.S. commissioner for trademarks as quoted in the San Francisco Chronicle.
In the 2005 Dykes on Bikes case, the USPTO seems to have considered and agreed with the argument that “[t]he determination of whether a specific term or phrase is disparaging can only be made from the point of view of the referenced minority group.” But the office is not yet willing to accept that the term “slant” can be considered acceptable by the API community.
What Happens After a Trademark Application is Rejected?
Any rejected trademark application can be appealed, but it should be noted that even when trademark registration is denied, the proposed mark may still be used in commerce—the user simply does not receive the legal protection and benefits of a registered trademark, including the right to bring a federal lawsuit for infringement.
The lesson here is that if you are planning on applying for trademark registration for a mark that might be considered disparaging, immoral, or scandalous, make sure you have plenty of evidence to present to the USPTO showing otherwise. But sometimes even that is not enough.
Interested in all the legal details? You can follow the The Slants' USPTO case.