NAPABA Concerned about Impact of Supreme Court Trademark Ruling

News Release

For Immediate Release
June 19, 2017

 For More Information, Contact:

 Brett Schuster, Communications Manager
 [email protected].

, 202-775-9555

WASHINGTON — The National Asian Pacific American Bar
Association (NAPABA) is concerned about the impact to diverse communities from
today’s ruling by the United States Supreme Court that the provision of federal
trademark law that prevents “disparaging” terms from being trademarked is
unconstitutional. The decision in Matal v. Tam (formerly Lee v. Tam) allows The
Slants, the Asian American rock band that challenged the provision, and other
groups — including the Washington football team — to register exclusive federal
trademarks using racial slurs.

“The ability of any business or individual to have the
exclusive ability to profit from racial slurs using a federal trademark, no
matter their intent, has harmful consequences,” said NAPABA President Cyndie M.
Chang. “As current events remind us, Asian Pacific Americans and other
communities are all too familiar with the damage caused by racial slurs and
epithets. While communities must have the ability to reclaim historically
disparaging terms used against them and exercise free speech, today’s decision
does not advance those objectives by granting exclusive ownership of a term in
commercial settings.”

In Lee v. Tam, the Court considered whether Simon Shiao
Tam’s application to trademark the name of his band, The Slants, was properly
rejected by the U.S. Patent and Trademark Office under Section 2(a) of the
Lanham Act, which permits the denial of trademark registration of “disparaging”
marks. Tam, who asserts the band’s name is an effort to reappropriate the slur,
challenged the validity of the statute, not only as applicable to his case but
for all trademarks. The Federal Circuit below ruled for Tam, finding Section
2(a) unconstitutional. The Supreme Court upheld that decision. In an opinion
written by Justice Samuel Alito, the Court concluded that the disparagement
provision violates the Free Speech Clause of the First Amendment and
constitutes discrimination based on viewpoint.

NAPABA joined the Hispanic National Bar Association, the
National Bar Association, the National Native American Bar Association, the
National LGBT Bar Association and the Fred T. Korematsu Center for Law and
Equality in filing an amicus brief in the U.S. Supreme Court supporting the
constitutionality of the rules prohibiting the registration of disparaging

The national affinity bar brief addressed the facial
challenge brought against Section 2(a), arguing that Congress has the ability
to regulate commercial speech, including trademarks. Section 2(a) is not a ban
on either reclamation of terms or use under the common law, but rather is a
mechanism for dealing with the harmful effects of racial, national origin and
religious discrimination on interstate commerce.

Finally, the brief discussed the impact of the Court’s
ruling on the ability of applicants to trademark slurs offensive to diverse
communities, including “Redskins,” whose name as the Washington football team
is pending a legal challenge by Native American plaintiffs that will likely be
impaired by today’s decision.

NAPABA previously filed an amicus brief in this case when it
was before the Federal Circuit. NAPABA also joined the National Native American
Bar Association and the Korematsu Center in an earlier-filed amicus brief in
the related case involving the Washington football team, Blackhorse v.
Pro-Football Inc., before the Fourth Circuit.

For more information, the media may contact Brett Schuster,
NAPABA communications manager, at

202-775-9555 or [email protected].

The National Asian Pacific American Bar Association (NAPABA)
is the national association of Asian Pacific American attorneys, judges, law
professors, and law students. NAPABA represents the interests of almost 50,000
attorneys and more than 80 national, state, and local Asian Pacific American
bar associations. Its members include solo practitioners, large firm lawyers,
corporate counsel, legal services and non-profit attorneys, and lawyers serving
at all levels of government.

NAPABA continues to be a leader in addressing civil rights
issues confronting Asian Pacific American communities. Through its national
network of committees and affiliates, NAPABA provides a strong voice for
increased diversity of the federal and state judiciaries, advocates for equal
opportunity in the workplace, works to eliminate hate crimes and anti-immigrant
sentiment, and promotes the professional development of people of color in the
legal profession.

To learn more about NAPABA, visit, like us on
Facebook, and follow us on Twitter (@NAPABA).

Press Release: NAPABA Files Amicus Brief in Federal Circuit Case Affecting Trademark Registration of Disparaging Marks

For Immediate Release
July 28, 2015

For More Information, Contact:
Brett Schuster, Communications Manager
202-775-9555, [email protected]

WASHINGTON – The National Asian Pacific American Bar Association (NAPABA), the South Asian Bar Association of Washington, D.C., (SABA-DC) and the Fred T. Korematsu Center for Law and Equality (Korematsu Center) jointly filed an amicus brief to support the U.S. government’s denial of trademark registration to an Asian American rock band in a case before the Federal Circuit. Amici were represented by Charanjit (Charan) Brahma, Michael Hobbs, and Daniel Sharpe at Troutman Sanders LLP.

Simon Shiao Tam applied to register a federal trademark for his band, “The Slants.” The U.S. Patent and Trademark Office denied his application based on Section 2(a) of the Lanham Act that permits it to deny registration of disparaging marks. Though Tam’s appeal was rejected by a panel of the Federal Circuit, the en banc court on its own accord vacated that decision and ordered an en banc hearing on whether Section 2(a) violates the First Amendment.

“Asian Pacific Americans are all too familiar with the harm, including violence, that often accompanies racial slurs and epithets,” said NAPABA President George C. Chen. “Although I recognize the band’s intent to reclaim a historically disparaging term, as an intellectual property attorney, I also am cognizant that changing the U.S. trademark regulations to allow the registration of ‘The Slants’ could result in the trademarking of offensive terms by individuals and groups without similarly positive intentions.”

“SABA-DC deplores the use of racial slurs and epithets, and while the particular epithet involved in this case is not one that is usually directed to our South Asian constituency, we believe slurs against any racial or ethnic group are damaging to us all,” added SABA-DC President Habib F. Ilahi. “The First Amendment protects free speech, but it does not entitle those who wish to use such derogatory terms for branding purposes to receive the stamp of government approval that comes with federal trademark registration.”

The amicus brief urges the court to recognize that federal registration of a disparaging mark implicates the government. It argues that the federal registry can be compared to county deed recording systems, under which property owners were permitted to record racially restrictive covenants. Until the 1948 case of Shelley v. Kraemer, courts enforced these private acts of discrimination. The amicus brief urges the Federal Circuit to not make the federal trademark registry a place where racism is recorded and authorized, and to not require our government to perpetuate racism.

Robert Chang, executive director of the Korematsu Center, commented, “While Mr. Tam seeks to embrace a derogatory racial term and to subvert it, a laudatory goal, a ruling against the government in this case would leave the government powerless to deny federal registration of trademarks to hate groups.”

“Troutman Sanders is pleased to be able to lend our experience in intellectual property and Federal Circuit appellate issues to aid NAPABA, SABA-DC and the Korematsu Center in this important case,” added Charan Brahma, a partner in Troutman Sanders’ Intellectual Property practice in the San Francisco office, and former president-elect of SABA-DC. 

The case, In re Tam, will be heard en banc by the Federal Circuit on Oct. 2, 2015.

The amicus brief is available HERE.

Contacts:         DC)
                        [email protected]

                        Brett Schuster, Communications Manager (NAPABA)
                        [email protected]

                        Robert S. Chang (Korematsu Center)
                        [email protected]