Simon Shiao Tam

Trademark Trial and Appeal Board

Sep 26, 2013

No. 85472044 (T.T.A.B. Sep. 26, 2013)

Mailed:
September 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Simon Shiao Tam
_____

Serial No. 85472044
_____

Ronald D. Coleman of Goetz Fitzpatrick, LLP for Simon Shiao Tam.

Mark Shiner, Trademark Examining Attorney, Law Office 102 (Mitchell Front,
Managing Attorney).
_____

Before Rogers, Chief Administrative Trademark Judge, and Kuhlke and Taylor,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Simon Shiao Tam, seeks registration on the Principal Register of
the mark THE SLANTS in standard characters for services identified as
“entertainment in the nature of live performances by a musical band,” in
International Class 41.1

1 Application Serial No. 85472044 was filed on November 14, 2011, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on an allegation of first use and use in
commerce on November 15, 2006.

THIS OPINION IS A
PRECEDENT OF THE T.T.A.B
Serial No. 85472044

2

Registration has been refused under Section 2(a) of the Trademark Act, 15
U.S.C. § 1052(a), on the ground that applicant’s mark “consists of or includes matter
which may disparage or bring into contempt or disrepute persons, institutions,
beliefs or national symbols under Trademark Act Section 2(a).”2 E.A. Br. p. 3.
When the refusal was made final, applicant appealed and requested
reconsideration. On December 20, 2012, the examining attorney denied the request
for reconsideration. Subsequently, the appeal was resumed and has been fully
briefed. We affirm the refusal.
Arguments and Evidence
The examining attorney contends that THE SLANTS is a highly disparaging
reference to people of Asian descent, that it retains this meaning when used in
connection with applicant’s services, and that a substantial composite of the
referenced group finds it to be disparaging. In support of this contention the
examining attorney has submitted several definitions from various dictionaries and
reference works that label “slant” as a derogatory word, including the following
definitions:
Slant/Slant-eye n. a derog. Term for an Oriental person The Cassell
Dictionary of Slang (1999);

Slant 1. A derogatory term used to refer to those of Asian descent.
More accurately, it tends to refer to anybody with slanted eyes. Urban
Dictionary (www.urbandictionary.com);
Slant noun US, derog. and offensive = slant-eye noun. Oxford
Reference Online www.oxfordreference.com;

2 This is applicant’s second application for the mark THE SLANTS for nearly identical
services. Application Serial No. 77952263 was also refused under Section 2(a) as
disparaging. Applicant appealed that refusal to the Board, but the case was dismissed for
failure to file a brief. E. A. Br. n.1; Office Action n.1 (June 20, 2012).
Serial No. 85472044

3

Slant noun a. South Asian person US 1942 Offensive The New
Partridge Dictionary of Slang and Unconventional English Vol. II
(2006) (http://books.google.com); and

[S]lant a derogatory nickname for any Oriental. From the shape of the
Oriental eyes. Slang and Euphemism (2d abridged ed. 1991).3

In one of the submissions other contextual meanings are included in the
definition:
Slant n. 1. a. A line, plane, course, or direction that is other than
perpendicular or horizontal, a slope, b. A sloping thing or piece of
ground; 2. Printing A virgule; 3. a. A personal point of view or opinion,
b. A bias; 4. Offensive Slang Used as a disparaging term for a
person of East Asian birth or descent. The American Heritage

3 Other definitions from reference works and websites include:

“Slant-eye, Slant pejorative term for a person of Far Eastern origin (Chinese, Japanese,
Korean, Vietnamese etc.) Derived from the term for those who have epicanthic folds.” List
of ethnic slurs (www.wikipedia.org);

“Slant … The noun is from 1655. Derogatory slang sense of ‘Oriental, slant-eyed person’ is
recorded from 1943, from earlier slant-eyes (1929).” Online Etymology Dictionary
(www.etymonline.com);

“Slant - Asians - Facial Description – referring to the eyes.” Ethnic Slurs
www.asianjoke.com;

“Slant, slanteye, slant-eye. A derogatory reference to Asians, based on the epicanthic fold,
or flap, over the eyes of some Asian peoples, giving the eyes a slanted look.” The color of
words: an encyclopaedic dictionary of ethnic bias in the United States (1997);

“Forbidden Terminology Derogatory Racial Terms Slant refers to the perceived shape of
Asian eyelids” 21st Century American English Compendium (3rd rev. ed. 2006);

“slope and slant, slanteye(s) an East Asian [including Japanese] or Southeast Asian person
having the ‘oriental’ epicanthic folds. (Intended and perceived as derogatory. User is
considered to be racially bigoted. … )” Forbidden American English (1995); and

“‘Jap’ is a derogatory term! … And, so are terms like ‘chink’ … and ‘slant.’” Japanese
American Citizens League Anti-Hate Program www.lacl.org. “The Japanese American
Citizens League is a national organization whose ongoing mission is to secure and maintain
the civil rights of Japanese Americans and all others who are victimized by injustice and
bigotry.” www.jacl.org.
Serial No. 85472044

4

Dictionary of the English Language retrieved from Credo Reference
www.credoreference.com and Wordnik www.wordnik.com (emphasis
added).

The examining attorney also included printouts from applicant’s web page
located at www.myspace.com/theslants, including the one depicted below:

Further, the band’s entry in Wikipedia is of record and references that “The
band name, The Slants, is derived from an ethnic slur for Asians.”
www.wikipedia.org.4 This entry also includes the following quote attributed to
applicant: “We want to take on these stereotypes that people have about us, like
the slanted eyes, and own them. We’re very proud of being Asian – we’re not going
to hide that fact. The reaction from the Asian community has been positive.”

4 This Wikipedia entry was attached to the First Office Action (January 6, 2012); therefore,
applicant had an opportunity to rebut it. In re Cook Medical Technologies LLC, 105
USPQ2d 1377, 1382 n.2 (TTAB 2012); In re Carrier Consulting Group, 84 USPQ2d 1028,
1032-33 (TTAB 2007). Applicant did not do so. As will be discussed infra, applicant does
not dispute the historical pejorative use of the term but, rather, can be characterized as
intending to embrace and redefine the term.
Serial No. 85472044

5

Finally, the examining attorney submitted printouts of online articles which
report that individuals representing Asian groups or in their individual capacity
consider the term “slant,” its plural “slants” and even specifically applicant’s mark
THE SLANTS to be disparaging terms. A few examples are set forth below:
A few years back, the Oregon Commission on Asian Affairs AND
the Asian American Youth Leadership Conference, both LOCAL
Oregon organizations, pulled support from the Slants, citing their
offensive name. I’ve got nothing against the Slants other than their
name, which is racially offensive… “bigWOWO” at www.bigwowo.com
(2010) (emphasis in original);

Earlier this year, the band experienced first-hand the complex and
diverse political perspectives of Asian Americans. Young5 was initially
slated to give the keynote address at the 2009 Asian American Youth
Leadership Conference in Portland. But some conference supporters
and attendees felt the name of the band was offensive and racist, and
out of respect for these opinions the conference organizers decided to
choose someone less controversial. “The Asian Reporter” (August 4,
2009);

“Young [applicant] called the new band The Slants – a name that has
been controversial from the start. … It wasn’t until he posted
advertisements for Asian bandmates and people responded by calling
him racist that Young realized the name pushed some hot buttons.”
The Oregonian (December 4, 2010); and

Oregon Governor Cancels Asian Band the Slants’ Performance at
Asian Youth Conference ... However, the OCAA withdrew support of
the event because they found The Slants’ name to be offensive towards
the Asian community. Fearing that the action would trigger similar
responses with other supporters, the AAYLC had no choice but to
select an alternate speaker and cancel the band’s appearance. “The
Daily Swarm” http://64.34.174.165/headlines (2010);

5 Applicant, Simon Shiao Tam, is also known as Simon Young. See Office Action (January
6, 2012) p. 57 (www.bigwowo.com/2011/04/the-slants-and-bigwowos-support-of-the-u-s-
patent-and-trademark-office).

Serial No. 85472044

6

In response to the refusal, applicant submitted the following dictionary
definition:6
Slant n. 1. a. A line, plane, course, or direction that is other than
perpendicular or horizontal; a slope. b. A sloping thing or piece of
ground. 2. Printing A virgule. 3. a. A personal point of view or opinion
b. a bias 4. Offensive Slang Used as a disparaging term for a person of
East Asian birth or ancestry.7

In addition, applicant submitted four third-party registrations and an
application for marks that contain the word “slant.” See Reg. No. 4123704 for the
mark SLANT for, inter alia, skateboards, water skis, surf skis, skis, snow boards;
Reg. No. 3894536 for the mark SLANT for, inter alia, motion picture film
productions, production of radio or television programs; and two marks for serving
ware for serving food, the standard character mark SLANT (Reg. No. 3437230) and
the design mark (Reg. No. 3437238).8
Applicant’s primary contention is that his trademark has been “refused
registration on the basis of Applicant’s race … [and given the] failure of proof and
misapplication of law, the evidentiary record does not support the PTO’s conclusions

6 We only include the noun definitions inasmuch as the verb definitions have less relevance
to the mark THE SLANTS wherein “slants” is used as a noun, as determined by use of the
definite article “the” immediately preceding the word “slants.”

7 American Heritage Dictionary of the English Language (http://ahdictionary.com May 2,
2012). Applicant also submitted the full excerpt of definitions for “slant” from the Oxford
English Dictionary which includes ten different meanings with the offensive slang meaning
as the last entry.

8 The fifth example is an application (Serial No. 85269787) and, as such, is of limited
probative value. Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090,
1092 n.5 (TTAB 1979) (an application is evidence only of its filing).
Serial No. 85472044

7

that the Application for registration of THE SLANTS should be denied.” App. Br.
pp. 3-4. Applicant asserts that the examining attorney failed to provide evidence
that the mark is “inherently offensive” and takes issue with the examining
attorney’s reliance on one possible meaning of the word “slant,” which resulted in
the examining attorney’s search parameters using the words “slant” and
“derogatory” to “confirm” his refusal. App. Br. pp. 12-14.
As to the Office’s evidence pertaining to applicant’s services and manner of
use, applicant argues that “the grounds for refusal constituted error [for] at least
two reasons … (1) They improperly condition registration on the ethnic background
of an applicant, and (2) they amount to an unprecedented prohibition against
registration by a particular individual or group of people because of their past use of
a mark.” App. Br. p. 17. Specifically, applicant contends that, based on the
examining attorney’s logic, non-Asians would be entitled to registration of the word
“slants” but Asians are not. Id. Applicant goes on to suggest that the only rebuttal
to the examining attorney’s refusal “would have been a submission proving that the
band was not entirely Asian and hence entitled to registration, a patently offensive
proposition.” App. Br. p. 18. With regard to applicant’s second point concerning its
past use, applicant asserts that the refusal is “dependent on the identity of the
person, rather than the content of the application.” 9 Id.
Applicant concludes that:
The refusal, rather, is based on who the Applicant is. It follows that if
anyone else on earth – Asian or otherwise – submitted an application

9 The “past use” is in reference to the examining attorney’s evidence of applicant’s use and
public perception of that use that is prior to applicant’s November 14, 2011 filing date.
Serial No. 85472044

8

to register THE SLANTS that was identical to the Application here,
registration would have been allowed. Concomitantly, Applicant could
never register THE SLANTS no matter the content of the application.

This result would be a surprising and troubling reading of 15 U.S.C.
§ 1052(a), and one that is not supported by law, policy or common
sense. Neither the ethnic identity of Applicant, the extent to which he
associates in his use of the mark with other Asians, the degree to
which he makes use of his own cultural heritage, or his identity in any
sense at all should be of relevance concerning registration of THE
SLANTS as a trademark for “entertainment in the nature of live
performances by a musical band.”

App. Br. p. 19.
Law
Registration of a mark which consists of matter which may disparage, inter
alia, “persons,” is prohibited under Section 2(a) of the Trademark Act. To
determine whether a proposed mark is disparaging the Board applies the following
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);10 In re Heeb Media
LLC, 89 USPQ2d 1071, 1074 (TTAB 2008); In re Squaw Valley Development Co., 80

10 See the Lebanese Arak decision for a discussion of the various provisions of Section 2(a)
and the differentiation between terms asserted to be disparaging and those asserted to be
scandalous.
Serial No. 85472044

9

USPQ2d 1264, 1267 (TTAB 2006). The burden of proving that a mark is
disparaging rests with the USPTO. Squaw Valley, 80 USPQ2d at 1271.
Whether a proposed mark is disparaging must be determined from the
standpoint of a substantial composite of the referenced group (although not
necessarily a majority) in the context of contemporary attitudes. Squaw Valley, 80
USPQ2d at 1269; Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1758 (TTAB 1999),
rev’d on other grounds 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003).
Depending on the facts of the case, a proposed mark may be: (1) an innocuous
term that in the context of the goods or services is disparaging, Lebanese Arak, 94
USPQ2d at 1223 (likely meaning of KHORAN is the Islamic holy text and use for
wine disparages religion and beliefs of Muslim-Americans); see also Doughboy
Industries, Inc. v. Reese Chemical Co., 88 USPQ 227 (PTO Exmr. In Chief 1951)
(Doughboy refers to World War I American soldier as reinforced by picture of soldier
on packaging and use on “a prophylactic preparation for the prevention of venereal
diseases” disparages the soldiers); (2) a disparaging term that may have a non-
disparaging meaning in a specific context, Squaw Valley, 80 USPQ2d 1264
(SQUAW when used with ski-related goods and services means Squaw Valley ski
resort under the first part of the test, but disparaging meaning remains as to other
non ski-related goods and services); or (3) a disparaging term that has no non-
disparaging meanings in any context, and remains disparaging despite the
applicant’s goods or services, actual use or intent, In re Heeb Media LLC, 89
USPQ2d 1071 (TTAB 2008) (applicant’s good intentions and inoffensive goods and
Serial No. 85472044

10

services do not obviate finding that HEEB is disparaging in context of the goods and
services; and mixed opinion among members of the referenced group does not erase
the perception of a substantial composite who find it disparaging).
Findings/Analysis
We must first determine, based on the evidence of record, the “likely
meaning” of THE SLANTS; and then, if there is a meaning that invokes a group of
persons, turn to consider whether that meaning may be disparaging to a substantial
composite of the referenced group.
What is the likely meaning?
The mere fact that the term has several meanings, even when many may be
innocuous, does not, as applicant seems to argue, foreclose the possibility that the
proposed mark is disparaging to a group of persons.11 When we take into account
the “nature of the identified services,” in this case, live performances by a musical
band, we are faced with a term that necessarily identifies people, i.e., the live
performers. Thus, those who attend the live performances will necessarily
understand THE SLANTS to refer to the persons who comprise the musical band.
Further, we must consider the “manner in which the mark is used in the
marketplace in connection with the services,” Lebanese Arak, 94 USPQ2d at 1217,
which the record in this case shows to involve touting the slang meaning of “slants.”

11 It appears to be applicant’s position that a term is “inherently disparaging” when there is
only one meaning for the word and that meaning is disparaging. However, when there are
multiple definitions of a word and the manner of use of the word in the marketplace only
points to the disparaging meaning, the term cannot be saved by the other irrelevant
meanings.

Serial No. 85472044

11

Thus, it is abundantly clear from the record not only that THE SLANTS, used for
the identified services, would have the “likely meaning” of people of Asian descent
but also that such meaning has been so perceived and has prompted significant
responses by prospective attendees or hosts of the band’s performances. The
evidence of public perception of the meaning of THE SLANTS, as used in connection
with applicant’s services, shows that meaning to be a derogatory reference to people
of Asian descent.
Applicant argues that 1) the proposed mark is not inherently disparaging and
there are no additional elements to make it so, and 2) there is nothing about the
services that make it disparaging. The problem with applicant’s analysis is that it
ignores “the manner in which the mark is used in the marketplace.” Id. The
musical group, in its advertising and on its website, promotes the “likely meaning”
of the mark to be people of Asian descent by, for example, displaying the wording
“THE SLANTS” next to a depiction of an Asian woman, utilizing rising sun imagery
and using a stylized dragon image. In addition, applicant actively seeks to associate
his services with this meaning as a way to embrace this slang meaning and to “own”
the stereotype represented by THE SLANTS. That applicant, or even the entire
band, may be willing to take on the disparaging term as a band name, in what may
be considered an attempt not to disparage, but rather to wrest “ownership” of the
term from those who might use it with the intent to disparage, and that some
members of the referenced group may support applicant’s use, does not mean that
all members of the referenced group of persons share applicant’s view. In Heeb
Serial No. 85472044

12

Media, 89 USPQ2d at 1077, we faced and rejected a similar argument, holding that
“[t]he fact that applicant has good intentions with its use of the term does not
obviate the fact that a substantial composite of the referenced group find the term
objectionable.”
Applicant contends that the examining attorney based his conclusion as to
“likely meaning” on the fact that “applicant is a founding member of a band (the
Slants) that is self-described as being composed of members of Asian descent.” App.
Br. p. 4, quoting examining attorney’s brief. Applicant argues further that:
The Examining Attorney’s rationale turned the entire policy
justification for Section 2(a) on its head. It was a refusal to register
based on the ethnic background of Applicant and his associates that
was offensive. Unless reversed by the Board this formulation
inevitably will involve the Patent and Trademark Office in
inappropriate and constitutionally suspect inquiries concerning the
ethnicity of applicants, their associates and their activities.

App. Br. p. 4.
Applicant is effectively arguing that because he actively seeks to convey a
message that he has taken ownership of the term and its meaning, and intends no
disparagement of members of the referenced group, the Office is prohibited from
finding that THE SLANTS is disparaging to others, precisely because of applicant’s
race. In other words, applicant intentionally adopted the mark because it is
disparaging to some, but we should ignore that because he is Asian and should not
be perceived as intending to disparage other Asians but, rather, as redefining the
term in a positive way. In essence, applicant does not address the injury that use of
THE SLANTS may cause to other members of the referenced group and instead
Serial No. 85472044

13

focuses on the asserted injury to himself, which he attributes to the examining
attorney’s improper consideration of his ethnicity. In the same way the particular
ethnicity of the people behind the corporate applicant in Heeb Media did not serve
to obviate or remove the disparaging nature of the term for others, here, too,
applicant’s ethnicity does not make his use unlikely to be perceived as conveying
the disparaging meaning of the term SLANTS for Asian Americans.
The focus of the inquiry into whether a mark is disparaging is not on
applicant’s race but rather on the referenced group’s perception of the likely
meaning of the mark.12 The evidence clearly shows both that members of the
referenced group ascribe the derogatory meaning based on applicant’s manner of
use and that members of the referenced group find it objectionable. There are no
“other elements” in the mark to affect its meaning, and there is nothing about the
way the mark is used in the marketplace from which one would understand the
term as meaning anything other than an Asian person. Thus, the refusal is
properly based on the perceptions of the referenced group and not on applicant’s or
his band-mates’ ethnic background.
The interpretation of “slant” as meaning “person of Asian descent” (as
opposed to other definitions of this word) arises because applicant’s mark is used in
a manner to mean “person of Asian descent.” Applicant cannot claim ownership
and redefine the term without a use that acknowledges the meaning that must be
overcome. However, it is very important to note that a finding that THE SLANTS

12 Section 2(a), 15 U.S.C. § 1052(a) focuses on the nature of the mark, not the applicant:
“No trademark . . . shall be refused registration . . . on account of its nature unless it . . .
[c]onsists of or comprises . . . matter which may disparage . . . .” (emphasis added).
Serial No. 85472044

14

is disparaging is not dependent on applicant’s ethnicity, but on the circumstances
related to his use of the term. An application by a band comprised of non-Asian-
Americans called THE SLANTS that displayed the mark next to the imagery used
by applicant shown supra would also be subject to a refusal under Section 2(a).
Finally, applicant’s objection that the evidentiary record includes applicant’s
“past use,” (i.e., use prior to the filing date of this application) and that such
evidence is not within the four corners of the application, ignores the first prong of
the test where we look to the “manner of use” which necessarily goes beyond the
“four corners” of the application. Moreover, a determination about the view of the
referenced group requires the USPTO to go outside the four corners of the
application even if only to reference a dictionary definition that labels a term as
derogatory. As to the date of the evidence, applicant bases his application on his
use of the mark since 2006 and all evidence from then until the present is
relevant.13 Notably, applicant has not submitted evidence rebutting the evidence of

13 Regarding the four corners of an application, in its brief, applicant acknowledges in
general that specimens may demonstrate disparaging use. App. Br. p. 10. As noted earlier,
applicant abandoned his prior application by failing to file a brief on ex parte appeal.
Applicant then filed this application, presumably with different specimens of use. As noted
by the examining attorney:

[T]hat applicant cleverly chose specimens that avoided associations with
Asians or Asian culture is not evidence that the mark is not used in a way to
conjure up the derogatory meaning and to be disparaging to Asians. … It is
worth mentioning that applicant appears to have reversed course on its
arguments for registrability, arguing in the prior application that because the
applied-for mark was being used by Asian-Americans as a self-descriptor, it
could not be disparaging, while in this case arguing that there is no
indication in the application that the mark is in any way associated with
Asians or Asian-Americans. … Applicant’s argument that the Office is
limited to the four-corners of the application in determining the disparaging
nature of the mark is too clever by half. Were applicant’s theory correct, any
Serial No. 85472044

15

likely meaning, to support, for example, the proposition that due to applicant’s
change in its manner of use members of the referenced group no longer perceive it
as having a disparaging meaning.
Is it disparaging to a substantial composite?
Having determined the likely meaning (in the context of the goods and
services and how applicant uses the mark), we look to the second prong: is the mark
disparaging to a substantial composite of the referenced group? The record
establishes that the slang term “slant” or its plural “slants,” when used to indicate
ethnicity, is disparaging to a substantial composite of the referenced group.
While there is some mention in the record of support for applicant’s mark in
the Asian community (to be clear, quoted statements from applicant noting such
support), “[o]ur consideration of whether the term is disparaging is not restricted to

smart applicant (or smart attorney) could easily draft an identification of
goods and services that skates around any mention of a group or persons
associated with a particular term, while at the same time, using the mark in
such a way as to associate the mark with the disparaged group. Office Action
(June 20, 2012).

In response to the examining attorney, applicant, in its Request for Reconsideration, states
that the refusal:

… is premised entirely on outside evidence of Applicant’s aggressively Asian-
themed artistic and commercial identity as used in the past with the mark.
[and the refusal is based on] his use of the mark in circumstances not
reflected in the Application but relied on as grounds for refusal in a previous
application [that has] been deemed offensive by third parties. Req. Recon.
pp. 6-7.

Applicant’s own actions highlight the wisdom of our well-settled test for determining
whether a mark is disparaging, which requires not only an assessment of information on
the “four corners” of the application, such as the mark and the goods or services, but also
looks at the manner in which the applicant uses the mark. Indeed, we also look at an
applicant’s manner of use to inform analysis of other types of refusals, such as those based
on genericness. See, e.g., In re DNI Holdings Ltd., 77 USPQ2d 1435, 1439-40 (TTAB 2005).
Serial No. 85472044

16

the perception of applicant’s” fans who have no objection to the name of applicant’s
band. Heeb Media, 89 USPQ2d 1077. Rather, we are charged with taking into
account the views of the entire referenced group who may encounter applicant’s
music entertainment services in any ordinary course of trade for the identified
services. Thus, all members of the Asian-American public may encounter the mark
THE SLANTS in advertising in newspapers, billboards or on a website.
The dictionary definitions, reference works and all other evidence
unanimously categorize the word “slant,” when meaning a person of Asian descent,
as disparaging. Moreover, the record includes evidence of individuals and groups in
the Asian community objecting to use of the term in the context of applicant’s band.
Taken as a whole we find the record contains substantial evidence to support the
refusal. Squaw Valley, 80 USPQ2d at 1272. Finally, applicant does not dispute
that the band’s name is derived from an ethnic slur and the evidence thereof stands
unrebutted.
The fact that applicant has good intentions underlying his use of the term
does not obviate the fact that a substantial composite of the referenced group find
the term objectionable. Heeb Media, 89 USPQ2d at 1077. As the examining
attorney states “while applicant may not find the term [disparaging], applicant does
not speak for the entire community of persons of Asian descent and the evidence
indicates that there is still a substantial composite of persons who find the term in
the applied-for mark offensive.” Office Action (January 6, 2012). Thus, despite
applicant’s assertion that “this is not yet another case of a member of an ethnic
Serial No. 85472044

17

group seeking registration of a supposedly offensive slur on the ground that group
members, or he in particular, have ‘embraced’ the term” (App. Br. p. 3), in fact it is
just such a case.
Applicant’s argument that other SLANT marks have been registered merely
underscores why, in cases such as these, where a term may have different meanings
depending on the context, the USPTO looks to the manner of use to ascertain
whether potential consumers would perceive the term as disparaging. None of the
marks in these third-party registrations refer to people.
We emphasize that this decision only pertains to applicant’s right to register
the term and “it is clear that the PTO’s refusal to register [applicant’s] mark does
not affect [his] right to use it. No conduct is proscribed, and no tangible form of
expression is suppressed. Consequently, [applicant’s] First Amendment rights
would not be abridged by the refusal to register [his] mark.” In re McGinley, 211
USPQ at 672, citing Holiday Inn v. Holiday Inn, Inc., 534 F.2d 312, 189 USPQ 630,
635 n.6 (CCPA 1976). See also Mavety, 31 USPQ2d at 1928. 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 applicant in enforcing the mark. See In re Fox, 702 F.3d 633, 105
USPQ2d 1247, 1252. Because we find it disparaging, however, the mark is
disqualified under Section 2(a) for registration.

Decision: The refusal to register under Section 2(a) is affirmed.