Asian-American rock band The Slants moved one step closer to trademarking their name Tuesday after a ruling issued by the U.S. Court of Appeals for the Federal Circuit.
The ruling states that the U.S. Patent and Trademark Office’s blocking of the registration on grounds that the band's name was offensive was unconstitutional and a violation of the First Amendment.
“The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks," the majority opinion reads. "It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation…amounts to viewpoint discrimination.”
The Trademark office’s use of the Lanham Act in the case did not survive “strict scrutiny," the court said.
“Section 2a is a viewpoint-discriminatory regulation of speech, created and applied in order to stifle the use of certain disfavored messages,” the opinion reads. “Strict scrutiny therefore governs its First Amendment assessment—and no argument has been made that the measure survives such scrutiny.”
The court directed the case back to the Patent and Trademark Office for “further proceedings.”
“This is an incredible victory,” Simon Tam, founder of The Slants, told NBC News. “While we were anticipating a greater split, a 10-2 vote in our favor shows that the overwhelming majority of the judges in one of the country's most conservative courts believes that the law used against us is unconstitutional. Of course, there are some legal next steps to deal with, and the Trademark Office will likely appeal the decision, but right now it's facilitating an important discussion in law on culture, identity, language, and the role of free speech.”
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Tam has fought six years in court to get trademark protection for the use of the band’s name, his way of re-appropriating the term and using it positively. The Patent and Trademark Office, relying on a provision that blocks trademarking “disparaging” names, had twice rejected The Slants' application.
He will now wait to see if the Trademark Office appeals to the Supreme Court.
“The Patent and Trademark Office found no other reason to deny registration, so unless the case is appealed to the Supreme Court, [The Slants leader Simon] Tam will get his registration,” John Crittenden, a partner in Cooley LLP's litigation department and adjunct professor at UCLA Law, told NBC News.
Crittenden said the ruling could also impact the fight of the Washington NFL football team to keep its name.
“It doesn’t automatically mean that the Redskins can keep their trademark registrations,” Crittenden said. “That case, Pro-Football v. Blackhorse, is pending in a different circuit court, the U.S. Court of Appeals for the Fourth Circuit, and so the Tam decision isn’t a binding precedent. But the Fourth Circuit will certainly look closely at what the Federal Circuit did in Tam – the decision it is reviewing relied heavily on the 1981 decision that the Tam court just overruled today, and the same constitutional arguments were made in both cases. The Fourth Circuit will probably consider today’s decision 'persuasive' precedent'.”
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This post has been updated to include Simon Tam's comments on the court ruling.