Tag Archives: The Slants

43(a)? It’s not for me to say

CAFCI’m kind of tired of In re Tam also.  But I have been a bit surprised that there has not been a more discussion, or as far as I can tell, hardly any, of a proposition pushed by the “amicus” brief filed by INTA, the International Trademark Association, on the en banc appeal — and how that proposition was most definitively rejected by the Federal Circuit in its December 22, 2015 opinion.

That’s the question of whether a would be trademark registration, barred by Section 2(a) on the grounds of disparagement (or, perhaps, any grounds), can still find some solace — or at least a federal forum for enforcement — by making a claim under 15 U.S. § 1125(a), otherwise known as Section 43(a) of the Lanham Act, which prohibits any false designation or description regardless of whether a mark is registered.

I use the scare quotes around “amicus” because with amici like this… well, in fact, I can and will say very little at this procedural moment, but will let the papers speak for themselves and invite the learned community to be heard.

First, some background on the INTA part of it, which may or may not have anything to do with the court’s decision to address Section 43(a), but is a story in and of itself.  INTA does not get involved as an amicus unless it is asked.  Read More…

So, how about those Redskins?

I’ve been writing about the Redskins and the tribulations — and, as it turns out, trials — of their REDSKINS trademarks since long before that first post about that rock band in Portland — a blog post that presented me with the opportunity to actually change the law I’d been kvetching about in those early Redskins posts, though I hardly thought that was the assignment I was accepting at the moment.  More on that later.

Still and all, that’s not something a blogger gets to do every day.

Next step? I have no clue.

Next step? I have no clue.

So, now, how about those Redskins?

Most of the reporters I spoke to after the opinion in In re Tam came out last week wanted to know how I thought our case would affect the NFL’s case.  Though we had very pleasant conversations, and often very long ones, the fruits of these discussions were seldom reflected in what was published, to put it mildly, if they were reflected at all.  This is the way of journalism, of course.

The good thing is that if I have something to say I can say it here.  I do, and based on what I’m seeing out there, I think it should be said, because I don’t believe that, so far, anyone else is saying it.

Again, first, let’s step back to when the original TTAB decision was issued in the Redskins appeal of the PTO’s unprecedented cancellation of its REDSKINS registrations.  I did post here on the topic, but gingerly, because our appeal of the denial of THE SLANTS registration was still working its way through the system.  The heart of what I wrote was this: Read More…

Talking the Slants talk

You might want to click through and read the whole exchange between me and a few interested (and interesting) friends last night about the trademark news of the day, if that stuff intrigues you at all after the deluge, or just for laughs.

Here are other places people have talked about the case since the last roundup: Ars Technica; Eugene Volokh; The Washington Post; Forbes — an article that makes important points omitted in most non-legal publications; IP Watchdog; The National Law Review; TTABlog, of course; Duets Blog; Eric Goldman; and I really don’t get the point of why I’m doing this. It’s a famous case, and they’re mostly saying the same thing.

UPDATE:  Lawrence E. Ashery of Caesar Rivise actually doesn’t say the same thing as everyone else; he actually gets what everyone else missed, and which I come to terms with here.  Yes, this is kind of hidden.  That’s how it’s going to be.


If you haven’t heard, the Court of Appeals for the Federal Circuit has ruled and THE SLANTS trademark has won.  Section 2(a) has been invalidated with respect to “disparaging” trademarks.

Here’s the opinion; some links reporting on the case can be found below.
Here’s Eric Garder (Hollywood Reporter); here’s Bloomberg; NPR News; Billboard; Reuters.  You get the picture!

We represented The Slants at Archer & Greiner, P.C.  The appellate team consisted of John Connell, Joel MacMull, and our former colleague Darth Newman.

Winning  this was nice. It appears that our work here is probably not yet done.  But I will write more, however.

UPDATE: Paul Alan Levy; Mike Masnick (TechDirt); The Wall Street Journal; Sports Illustrated; the Daily Mail (UK).

A different Slant

Originally posted 2011-04-07 13:42:39. Republished by Blog Post Promoter

The Slants

Does this story in the Northwest Asian Weekly about the trademark registration woes of a rock band called The Slants sound familiar?

The Slants, whose members are of Asian descent, have amassed fans nationwide, taking the stage at dive bars, Asian festivals, anime conventions, and even serving on panels to discuss racial stereotypes.

But behind the scenes, the band is fighting a battle with the United States Patent and Trademark Office USPTO. The office has twice denied The Slants’ request to obtain federal trademark registration of its name, or “service mark,” on the grounds that it is “disparaging to people of Asian ethnicity.”

The band denies that its name is offensive to Asians and is preparing to file a second appeal.

Good luck with that, fellows. I’ve addressed this issue here before in the context of such charming would-be trademark registrations such as HEEB and NIGGA, rejected as scandalous and offensive by the same PTO that granted that coveted registration status to such fabulous acts as, uh, this and this, and this.  And, of course, this.

All those thisses have to do with alternative lifestyles, once considered highly scandalous but now quite socially acceptable.  Ah, but nicknames to describe those who so alternate?  Perfectly fine when adopted by the object of former derision with “pride.”

That rule, however, does not apply to ethnic groups.  As I said in the above-linked posts regarding the HEEB and NIGGA applications, racism remains the third rail of American bureaucratic practice — ironic self-descriptive pride notwithstanding.

Is there any good policy reason behind this?  Or is it, as I suggested in the NIGGA post, merely a way to avoid even having to read, much less type out, the word “nigger” in a government building near Washington, DC?

That is not a good reason.

Hat tip to Reid Wilson via this tweet.

Friday in Washington with a dozen of my closest friends

That’s probably the best way to write this post; indeed, I sat down before completing my allotted time on rebuttal on Friday, before the Federal Circuit en banc — all twelve of them, 1-2-3-4-5-6-7-8-9-10-11-12, walking out in their black robiness, thank-you-please-be-seated, because at that point there were no more points to which to point.  If you  click that link you can hear the arguments, but what really seems to have survived was what went down Friday, though one never really knows.

If you came in late, this is the en banc brief of The Slants; these are the briefs of amici in support; the government filed this saying nay, nay; and the amici supporting the PTO can be found here.

There is a lot of news reporting, some of it insightful, on the case, though.  Here is the story from the always fine Recorder out west; Reuters; Courthouse News ServiceFox News; and an insightful piece from a site called The Conversation.

I’ll catch up on rounding up blog commentary next week; there will be none from me now, save what I’ve already said via Twitter — mainly that it was a great professional experience and I am grateful to my colleagues for their help in getting me as prepared as I was for it. 

There’s more to say, so very very very much more, but it will have to wait.

One more thing, though: If you will please consider this bleg?:

UPDATE:  It was was an even better professional experience than I’d realized.  The Slants win!



Laws don’t kill free speech, legislators do

Reply brief on en banc hearing in the Federal Circuit for The Slants

Previous related documents:

THE SLANTS trademark appeal: The other side

The Slants 2I posted the en banc Federal Circuit brief of Simon Tam for the Slants, and those of the amici curiae in his support shortly after they were filed.

Well, of course there’s another side to this, and it has been heard.  Here is the brief of the PTO seeking affirmance.  Then came the brief of amicus curiae, and in particular friends of the PTO, the South Asian Bar Association; and here is the submission of Richard L. Stanley.

Amanda Blackhorse — adversary of the Redskins in that litigation — has also filed in support of the PTO, which makes sense, considering that the Redskins (i.e., the NFL) filed a brief in support of The Slants.  As soon as the clerk-approved brief is released for publication, I will add that too.  Here’s the Blackhorse amicus brief.

Wait — Richard L. Stanley?  Who?  Unlike some people, Richard is not a big Internet personality.  No website, no blog.  Richard doesn’t talk the talk but, as set out in this article (and, I assume, in his brief; I haven’t read it yet) he does walk the walk.

Let Richard explain himself here, though, as he does in the first section of the filing.  It’s at least as interesting as anything in any of these submissions: Read More…

Friends of the court, friends of the First Amendment

The approved and publishable amicus briefs in the appeal regarding the trademark registration of THE SLANTS are trickling in. Certainly interesting to see who is saying what.  So far, they all seem to be on the side of The Slants, though interestingly the INTA amicus brief does not take a position on the First Amendment issue (maybe because that’s usually a subject raised by defendants in infringement cases?) but instead addresses, as is appropriate given INTA’s level of trademark expertise, the issue of 43(a) of the Lanham Act.  INTA urges, understandably, that the constitutionality question “does not turn” on the availability or interpretation of 43(a) protection for unregistered marks.
The Slants - Chinatown Dance Rock
What do we have?  Here’s the amicus brief of Public Knowledge, styled as “in support of neither party”; here is Pro Football, Inc.’s (i.e., the Washington Redskins’) amicus brief very much in support of appellant; and now comes the First Amendment Lawyers Association (that’s Randazza and friends).

Here’s one we hadn’t counted on:  a submission by the Rutherford Institute together with the Cato Institute.  Cato’s blog post, authored by Ilya Shapiro, is here; the Cato / Rutherford amicus brief is here.

Hey, what happened to the ACLU, which, formerly (you should pardon the expression) confused, has now seen the light on this business?  Evidently the dog ate their ECF registration, and the ACLU amicus brief was filed a day late — today — along with a motion seeking permission to do that, for reasons set out therein.  Enough said — they are our friends (now) and, unlike those stinkers at Public Knowledge, say so right on the cover of their submission.

Okay, and what about those guys over at Public Knowledge?   Read More…