Call this a surprising coda for an Asian-American dance rock band involved in a long-running effort to secure a federal trademark registration for its name:  The Slants. A federal appellate court has taken it on its own accord to reconsider en banc the three-judge ruling that just recently reafirmed the Trademark Trial and Appeals Board decision to deny mark registration to the founder of the Asian-American band.

While a certain pro football team can take the field in the nation’s capital and give wide offense, many say, to Native Americans, Simon Tam, the dance rock band’s founder,  twice was refused mark registration for his group’s name. On both occasions, the examining attorney refused to register it, finding it “disparaging to Asian Americans.” The case went up on appeal, here’s how it came down, then turned around–a little like watching a Washington linebacker running in circles in downfield.

The disparagement clause

On appeal, Tam argued that the board erred in finding the mark disparaging under Section 2(a) of the Lanham Act and challenged the constitutionality of this proviso that lets the U.S. Patent and Trademarks Office refuse to register a mark with matter that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute.”

The primary test to determine if a mark is disparaging is (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 the meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether the meaning may be disparaging to a substantial composite of the referenced group. See: In re Geller , 751 F.3d 1355, 1358 (Fed. Cir. 2014)

A racial slur?

The appellate court agreed with the board’s finding of substantial evidence showing The Slants’ mark referred to people of Asian descent. While the court agreed that slants had many meanings, the judges said the key question they had to determine was the mark’s likely use in commerce by Tam. The evidence, the court said, strongly supported the board’s finding the term likely referred to people of Asian descent. The court considered evidence, such as the band’s Wikipedia page, stating it name was “derived from an ethnic slur for Asians.” The court also took notice of an article in which Tam stated the band wanted to “take on these stereotypes that people have about us, like the slanted eyes, and own them.”

That didn’t help Tam’s case, nor did the band’s official website displaying the words The Slants in conjunction with images of an Asian woman, a stylized dragon, and rising sun imagery; these all reference traditional Asian motifs. Finally, the court’s record also included evidence that both individuals and Asian groups perceive the term as referring to people of Asian descent.

While Tam objected to consideration of some evidence as hearsay, the court disagreed, finding no procedural error, as, under the Trademark Trial and Appeal Board Manual of Procedure, officials may take a “somewhat more permissive stance with respect to the admissibility and probative value of evidence.”

After agreeing with the board’s decision that The Slants mark likely referred to Asian people, the court then considered if that meaning was likely offensive to a substantial number of them. No surprise: evidence in the record showed the term by definition was “universally characterized … as disparaging, offensive, or an ethnic slur.” The record included news articles and blog posts discussing the offensiveness of the band’s name, and a brochure by the Japanese American Citizens League describing the term as “derogatory” and “demeaning” to Asian people.

The court then quickly shot down Tam’s constitutional arguments: the judges denied a First Amendment argument, citing McGinley (the applicants’ free speech rights are unaffected because even if the government won’t register a trademark, it still may be used, i.e. Tam still may call his band whatever he wants.) As to Tam’s Equal Protection claim, the court rejected it, too. Officials were not discriminating against Tam and his band mates because of their ethnic or racial identities but rather because of the disparaging nature of their proposed mark.

A precedent reconsidered

Band members reacted sharply to the first appellate decision. Band members long have said they seek to reclaim the racial slur by flaunting it in use. They pointed to Judge Kimberly Moore’s heated and extensive dissent in the case. She called for a reexamination by the appellate court of McGinley, arguing that The Slants name is private, protected speech that is undeserving of government regulation and interference.

Football teams and rock bands — these are supposed to be distractions and entertainments, right, so how did their marks become the objects of such attention and controversy? The DC football kicked the issue into max attention when officials canceled its mark, leading to appeals and resistance from the Obama Administration and Native American groups, and, at the same time, support from the ACLU.

Meantime, provocateur nonpareil Pamela Geller–whose recent Texas festival of cartoons of the Prophet Mohammed ended in a shoot-out with two terrorism suspects dead — has appealed authorities’ rejection of her attempt to register the mark, Stop the Islamisation of America. Prof. Eugene Volokh has posted that other cases have barred mark registration for: Heeb, Porno Jesus, and Khoran for a wine.

Because musicians, in particular, make this argument so vociferously that their creative work speaks best for them, the final say here goes to The Slants–a little sample of their music, notwithstanding their name: