What kind of evidence would you bring to the table to show you’re not offensive to yourself?
Simon Tam posed that question to a group of attorneys gathered Thursday in Denver. It’s one he spent years trying to answer as he fought to trademark the name of his band, The Slants.
He finally won that battle in 2017 in the landmark U.S. Supreme Court case Matal v. Tam. Now he travels the country to speak at events like the one held Oct. 10 by the Intellectual Property Section of the Colorado Bar Association at Denver ChopHouse.
Tam founded a band in Portland, Oregon in 2006. They needed a name, and the band’s members were Asian American, so Tam asked his friends, “What’s something you think all Asian people have in common?” Their answer: slanted eyes.
Tam said he associated slanted eyes with shame, fear and embarrassment — a reminder of the bullying he faced growing up. But, he thought, why not reclaim the stereotype and turn it around?
“What if we change it from embarrassment to empowerment, from shame to this idea of self-pride? And so, the idea for The Slants was born,” Tam said.
While they hadn’t meant to start a political project, the band started getting mail from young fans thanking them for representing Asians in a new light. The band started taking classes on diversity and counseling and got involved with social justice organizations.
In 2009, Tam’s friend Spencer Trowbridge, an IP attorney in Portland, suggested the band trademark its name, a process Trowbridge said would be cheap and quick. In the spring of 2010, Trowbridge told Tam the Patent and Trademark Office had rejected the band’s application because they deemed its name disparaging to people of Asian descent, and Section 2(a) of the Lanham Act prohibits registering marks considered “scandalous, immoral or disparaging.”
“I’m like, do they know we’re of Asian descent?” said Tam, who is Chinese American.
Trowbridge and Tam started compiling evidence for an appeal to show that Asian Americans weren’t offended by the name. They got cultural studies scholars to talk about the reappropriation of the word “slant.” They showed glowing coverage of the band in Asian American media and got leaders from community organizations to vouch for the band. They even had two independent surveys showing over 90% of Asian Americans supported the band’s name.
It was the biggest appeal in history under Section 2(a) of the Lanham Act, Tam said, and it wasn’t good enough. The PTO cited UrbanDictionary.com, AsianJokes.com and a British dictionary of slang from the 1940s to show the word “slant” was offensive.
In early 2011, Tam found himself without a lawyer when Trowbridge decided not to renew his license. A web search led Tam to attorney Ron Coleman, who agreed to take his case pro bono. Coleman told Tam he had been approaching the matter all wrong and suggested they abandon the first application and reapply for the trademark. This time, they wouldn’t mention anything about the band being Asian.
They ended up getting the same examining attorney at the PTO, who copied and pasted his previous rejection. Tam was frustrated, but Coleman was inspired.
“Ron actually seemed amused by all of this. He said, ‘No, no, we caught them. We caught them because they broke their own rules,’” Tam recalled. The PTO is required to do a fresh evaluation of every application it gets, so Coleman started putting together an appeal based on technical and procedural arguments about the examining attorney’s review process. They also questioned why, of more than 800 trademark applications containing some variation of the word “slant,” only Tam’s had been denied. When their appeal was rejected, they got an answer.
“They said it’s because the band is just too Asian,” Tam said. The PTO reasoned that because Tam and his bandmates were all Asian, it created a disparaging association with the ethnic slur that didn’t exist for other applicants, according to Tam.
The Federal Circuit eventually agreed to hear the case. Junior associate Joel MacMull helped to prepare briefs while Coleman was dealing with a medical emergency, Tam said. MacMull decided to add a few constitutional arguments: one about due process, and another alleging the Lanham Act’s disparaging provision violated Tam’s freedom of speech.
It turns out the appellate court didn’t care about the evidentiary or procedural arguments, nor did it care that the PTO had used the band’s race against them, Tam said. Its only concern was whether Section 2(a) of the Lanham Act violated the First Amendment. In 2015, they argued their case, and nine of the 12 Federal Circuit judges agreed that the provision was unconstitutional.
Despite the victory, Tam couldn’t register his mark because the PTO and Department of Justice were in the process of appealing to the U.S. Supreme Court.
Shortly before trial, The Slants released a new album called “The Band Who Must Not Be Named.” Tam said the album’s first track, “From the Heart,” was meant to be “an open letter to the trademark office.”
“And much to the chagrin of my attorneys, we played this on the steps of the U.S. Supreme Court,” Tam said. It was Martin Luther King Jr. Day, and the band later walked to the national memorial commemorating the civil rights leader. Tam said his eyes fell upon one of his favorite quotes from Dr. King: “The arc of the moral universe is long, but it bends towards justice.”
“I remember staring at those words and thinking, it’s been seven and a half years that I’ve been in court. I didn’t even commit a crime. I just wanted to start a band called ‘The Slants,’” Tam said. But King’s words reminded him of the need for persistence and patience.
The Supreme Court heard oral arguments on Jan. 18, 2017. Tam said being in court made him feel “insignificant, invisible and small.” The band was told they couldn’t sit near the front because the seats were being saved “in case someone important shows up today,” Tam said. Tam sat in court listening to everyone talking about him, but he couldn’t speak up and respond.
“The irony of it all. I’m fighting for freedom of speech in our nation’s highest court, and in that room, I can’t say a thing,” Tam said.
He said he felt better when a crowd cheered as the band left court. A group of journalists asked for comments.
“So I got up on the microphone and I said: If the government truly cared about fighting against racism, while using trademark office to do so, why didn’t they begin by canceling the registrations of the KKK or Stormfront or other actual hate groups?” Tam said. “Why did they choose to wage this battle against an anti-racist band?”
On June 19, 2017, the Supreme Court ruled unanimously in favor of Tam. He heard the news on Twitter after waking up to hundreds of missed notifications. The Slants finally registered their trademark on November 14, 2017.
“Now I travel and I share this story,” Tam said, wrapping up the talk. Since his court victory, he has also written a memoir and started a non-profit to help Asian American artists interested in activism.
— Jessica Folker, [email protected]