From the Preliminary Statement:
This is not yet another case of a member of an ethnic group seeking registration of a supposedly offensive slur on the ground that group members, or he in particular, have “embraced” the term. This is something far more serious, and implicates the subversion 15 U.S.C. §1052(a) and the policy underlying it. This is an Ex Parte Appeal of trademark explicitly refused registration on the basis of Applicant’s race.
The perverse outcome described arose from an application process rife with serious legal and procedural deficiencies. Applicant Simon Shiao Tam, founder of a band called The Slants, filed the Application that is the subject of this Ex Parte Appeal, seeking registration of THE SLANTS for “entertainment in the nature of live performances by a musical band” on November 14, 2011. The Examining Attorney refused registration, stating initially that the “likely meaning” of “THE SLANTS” was as “a negative term regarding the shape of the eyes of certain persons of Asian descent,” citing sources indicating that the word can refer to “persons of Asian descent . . . in a disparaging manner.” The Examining Attorney found that the mark, of which the dominant feature is the ordinary English word “slant,” “is an inherently offensive term.”
In a subsequent office action, however, the Examining Attorney implicitly acknowledged that the refusal was based not, or not only, on the implausible characterization of the word “slant” as inherently offensive. In that office action, the Examining Attorney addressed Applicant’s argument that, absent adequate proof of inherent offensiveness, the Application provided no basis for the “association” between the word “slant” and the Asian community. Referring to his own Internet research, the Examining Attorney explained that the association was unavoidable because “applicant is a founding member of a band (The Slants) that is self described as being composed of members of Asian descent.” It followed, therefore, that “the association of the term SLANTS with those of Asian descent is evidenced by how Applicant uses the mark – as the name of an all Asian-American band” of which he, an Asian, is a member.
The Examining Attorney’s rationale turned the entire policy justification for Section 2(a) on its head. It was a refusal to register based on the ethnic background of Applicant and his associates that was offensive. Unless reversed by the Board this formulation inevitably will involve the Patent and Trademark Office in inappropriate and constitutionally suspect inquiries concerning the ethnicity of applicants, their associates and their activities. Given this failure of proof and misapplication of law, the evidentiary record does not support the PTO’s conclusions that the Application for registration of THE SLANTS should be denied. The Board should reverse that determination.