Relying on dictionary definitions, online articles, and applicant's own webpage and Wikipedia entry, Examining Attorney Mark Shiner maintained that THE SLANTS is a highly disparaging term to people of Asian descent, that it retains that disparaging meaning when used in connection with applicant’s services, and that a substantial composite of the referenced group finds it to be disparaging.
Applicant contended that the PTO failed to prove that the mark is "inherently offensive," since the word "slant" has several meanings and is therefore not "inherently disparaging." He challenged the propriety of the PTO's consideration of the manner in which applicant used the mark, asserting that the refusal was "dependent on the identity of the person, rather than the content of the application." According to applicant, the analysis should be limited to the "four corners" of the application, and consequently the PTO improperly considered applicant's ethnicity and his use of the mark in reaching its conclusion.
The Board pointed out that the determination of whether a mark is disparaging under Section 2(a) requires application of a two-part test:
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 that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. In re Lebanese Arak Corp., 94 USPQ2d 1215, 1217 (TTAB 2010).
The Board first considered the likely meaning of THE SLANTS. Although the term may have innocuous meanings, when the identified services are taken into account the term necessarily identifies people, and those that attend the live performances will understand the term to refer to the band members. Not only does THE SLANTS have the "likely meaning" of persons of Asian descent, but the evidence showed that the meaning has been so perceived and has prompted negative responses by prospective attendees or hosts of the band's live performances. This evidence thus demonstrated that the meaning of THE SLANTS is a derogatory reference to people of Asian descent.
Applicant's musical group promotes this "likely meaning" of the mark in its advertising and on its website, displaying the words THE SLANTS adjacent a depiction of an Asian woman accompanied by stylized rising sun imagery and a stylized dragon.
In fact, applicant actively sought to associate his services with this meaning as a way of embracing the slang meaning and to "own" the stereotype represented by THE SLANTS. However, even if applicant is willing to take on the disparaging term as a band name, that does not mean that all members of the referenced group share his view. See In re Heeb Media LLC, 89 USPQ2d 1071 (TTAB 2008) (applicant's good intentions and inoffensive goods and services do not prevent finding that HEEB is disparaging; mixed opinion among members of the referenced group does not erase the perception of a substantial composite who find it disparaging). In short, applicant does not speak for the entire Asian community.
The Board deemed it important to note that a finding that THE SLANTS is disparaging does not depend on applicant's ethnicity but on the circumstances relating to his use of the mark. "An application by a band comprised on non-Asian Americans called THE SLANTS that displayed the mark next to the imagery used by applicant ... would also be subject to a refusal under Section 2(a)."
In his complaint that the PTO improperly went outside the "four corners" of his application in order to consider his manner of use of the mark, applicant ignored the first prong of the applicable test for disparagement. The "manner of use" necessarily requires looking beyond the contents of the application itself. Were that not the case, the Examining Attorney pointed out, a clever applicant could easily craft an identification of goods and submit a specimen of use that avoided any mention of the group referenced by the term, while at the same time using the mark in a disparaging manner.
Turning to the question of whether THE SLANTS is disparaging to a substantial composite of the referenced group, the Board noted the evidence of record indicating that individuals and groups in the Asian community have objected to applicant's mark. As a whole, the evidence contained "substantial evidence to support the refusal."
Finally, the Board observed that the refusal to register does not affect applicant's right to use the subject mark, but only his right to register.
This case is solely about whether the applicant may 'call upon the resources of the federal government' to obtain federal registration of the mark on the Principal Register in order to assist in enforcement of the mark. See In re Fox, 105 USPQ2d 1247, 1252 (Fed. Cir. 2012).
And so the Board affirmed the refusal.
Read comments and post your comment here.
TTABlog note: Ron Coleman, counsel for applicant and noted blogger, comments here (as well as in the comment section of this posting), and reports that applicant will appeal to the CAFC.
What does this case portend for the pending REDSKINS cancellation proceeding? Remember that in that case, the petitioners must prove disparagement as of the respective dates of issuance of the subject registrations (from 1967 to 1990). That may make their task a bit more difficult.
Text Copyright John L. Welch 2013.
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