Wendel Rosen's Intellectual Property Blog

Unstoppable Force Meets Immovable Object: Federal Circuit Court’s Slants Decision vs. Lanham Act Section 2(a) re: Disparaging Trademarks

We recently wrote about In re Tam, the Federal Circuit Court’s decision invalidating Section 2(a) of the Lanham Act.  The Court held that Section 2(a), which precludes trademark registration of immoral, deceptive, scandalous or disparaging trademarks, violates the First Amendment.  The Court ruled for The Slants, a Portland-based band comprised of Asian Americans who had sought to trademark their name, but whose trademark application had been rejected by the U.S. Patent and Trademark Office (USPTO)  as “disparaging.”

 

The band The Slants

Portrait of Asian-American band The Slants (L-R: Joe X Jiang, Ken Shima, Tyler Chen, Simon “Young” Tam, Joe X Jiang) in Old Town Chinatown, Portland, Oregon, USA on 21st August 2015. (Photo by: Anthony Pidgeon/Redferns)

The Court’s decision could have wider implications, especially with regards to the Washington Redskins’ appeal to regain their trademark, which is pending before the Fourth Circuit, a “sister” court to the Federal District Court. In December, Simon “Young” Tam (the Tam in In re Tam) wrote this blog post sharing his views about media coverage of the case, including the desire of the media (and attorneys) to compare the case to the Redskins’ case and issues surrounding identity politics. It’s definitely worth a read!

The USPTO Strikes Back, Sort of

In response to the In re Tam decision, last week the USPTO decided that it would put trademark applications with Section 2(a) issues in limbo.  The USPTO issued  Examination Guidance 01-16, which advised that “while the constitutionality of these provisions remains in question and subject to potential Supreme Court review” the USPTO will handle trademark applications with section 2(a) problems by issuing an “advisory refusal and suspend action on the application.”

The Slants’ Full Court Press

But The Slants aren’t willing to wait. Yesterday The Slants filed a writ of mandamus petition asking the Federal Circuit Court to order the USPTO to immediately process The Slants’ trademark registration.

The $64,000 question is whether the Federal Circuit Court will grant The Slants’ petition, rather than wait for the issue to percolate up to the Supreme Court. One Court observer  has noted that in recent years the Federal Circuit Court has become more aggressive about issuing such extraordinary relief.

 

Blog note: Photo updated 3/16/2016

3 Responses to “Unstoppable Force Meets Immovable Object: Federal Circuit Court’s Slants Decision vs. Lanham Act Section 2(a) re: Disparaging Trademarks”

  1. Simon Tam

    Hi Josh,

    There’s already been an update on the case: the CAFC ordered the USPTO fo respond to our bid for a write of mandamus on compliance to the Dec. ruling.

    Thank you for sharing about our case! Also, in the future, could you contact us about using images first? That is an out of date photo from 4 years ago that has a completely different lineup. Thank you!

    Like

    Reply
    • Josh Cohen

      Simon:

      Thanks for the update. It will be interesting to see how the USPTO responds to your petition. We updated your photo on the blog.

      Like

      Reply

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