In re Simon Shiao Tam

In 2006, Simon Tam (plaintiff) began performing with a rock band under the name “The Slants.” Tam and his band members were Asian-American. The Slants wrote and performed music that highlighted Asian stereotypes, and they used their band name to show that they embraced these stereotypes with pride. In 2011, Tam filed an application with the Patent and Trademark Office (PTO) to register the mark “THE SLANTS.” The PTO examiner rejected Tam’s application under § 2(a) of the Lanham Act, which prohibits the registration of marks that are immoral, deceptive, scandalous, or that disparage others. The examiner found that the term “slants” was historically a derogatory term that was still offensive to most Asians. Tam appealed to the Trademark Trial and Appeal Board (Board). The Board upheld the examiner’s rejection of Tam’s application, reasoning that THE SLANTS likely referred to people of Asian descent and evidence showed that many Asian individuals and groups objected to Tam’s use of the name. Tam appealed, arguing that § 2(a) was an unconstitutional restriction on free speech under the First Amendment. A panel of the United States Court of Appeals for the Federal Circuit upheld the Board’s ruling and applied binding precedent to affirm that § 2(a) did not implicate the First Amendment, let alone violate it. However, the Federal Circuit ordered a rehearing en banc to specifically consider whether § (2)(a)’s bar on registering disparaging marks violated the First Amendment.