The Name Game: A Rock Band’s attempt to register the name “the Slants” rejected under §2(a)
The importance of a band’s name cannot be understated. Most often, it is the first thing music fans notice, even before the music itself. Have you ever just checked out a band’s music because you liked their name? Most of us are guilty. A band’s name is plastered all over posters, magazine covers, billboards, and the Internet and becomes a defining feature of the musicians. It is no surprise then that the founder of an Asian-American dance-rock band opted to pursue an appeal when his band’s name, “the Slants”, was rejected under Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a). The act prohibits registration of a mark that “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.”
Simon Shiao Tam, a/k/a Simon Young, is the founder of the Slants, a band founded in 2006 in Portland, Oregon. In 2011, Tam filed an application with the Patent and Trademark Office to register the term “The Slants” as a trademark on the principal register for “entertainment in the nature of live performances by a musical band.” A trademark examiner refused the name under § 2(a) of the Lanham Act. Tam requested reconsideration, which was rejected. He then appealed. The Trademark and Trial Appeal Board affirmed the decision below on September 26, 2013.
The name was initially rejected because of the derogatory nature of the term. Administrative Trademark Judge Karen Kuhlke cited numerous dictionaries and other online sources that indicated “slant” was a derogatory term for East Asians. This originates in a stereotype of the appearance of the eyes of people from particular ethnic groups. The board also cited the band’s Wikipedia entry, which indicated the name originated in an ethnic slur. Tam argued that the intent was to “take back” the ethnic slur and is quoted in the entry saying, “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them.” Tam also argued that the registration’s rejection was based solely on the basis of his racial background, which the board rejected.
Tam also pointed out that registrations existed incorporating the term “slant” for other goods and services. The board noted however, that Section 2(a) requires a look at the use of the term in the context of the marketplace. It found that the musical group promotes the “likely meaning” of the mark to be people of Asian decent in its advertising and on its website. The board interpreted Tam’s argument to mean that because he is ethnically Asian, his intentional adoption of a disparaging term should not be interpreted as disparaging. The board compared the situation to that in In re Heeb Media LLC, 89 U.S.P.Q.2d 1071 (T.T.A.B. 2008) (77 PTCJ 196, 12/19/08), in which the board refused registration of a trademark incorporating the disparaging term “Heeb.” The board said, “Applicant cannot claim ownership and redefine the term without a use that acknowledges the meaning that must be overcome,” the board said. “However, it is very important to note that a finding that THE SLANTS is disparaging is not dependent on applicant’s ethnicity, but on the circumstances related to his use of the term.” The board thus concluded that the likely meaning of the term in context of its use in commerce was disparaging.
Furthermore, the board determined that in the context of the entire Asian-American community—as opposed to just fans of the band—the term would be considered disparaging, regardless of Tam’s intent in using it. “The fact that applicant has good intentions underlying his use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable,” the board said. The board thus affirmed the refusal to register under Section 2(a), ultimately expressing that intent alone appears insufficient in this name game.
