Federal Circuit rejects Slants writ
The US Court of Appeals for the Federal Circuit has rejected a request by rock band The Slants to order the US Patent and Trademark Office (USPTO) to process a trademark application.
In a decision handed down yesterday, March 30, the federal circuit rejected claims that the USPTO had “flatly refused” to comply with court orders.
Earlier this month, WIPR reported that The Slants filed a writ of mandamus which said the application for its name should be published for opposition and that the USPTO had made a “serious error in law”.
The band’s trademark application was initially refused by an examiner, the Trademark Trial and Appeal Board and a three-judge federal circuit panel on the grounds that it violated section 2(a) of the Lanham Act.
Section 2(a) prevents applicants from registering trademarks that are deemed disparaging. A ‘slant’ is a slang word for a person of Asian heritage.
But in a decision handed down in December last year, an en banc federal circuit said that the application can be registered as a trademark after the band successfully claimed that denying it the mark would violate its First Amendment rights.
The dispute then took a twist when the USPTO ordered its examiners to suspend trademark applications that are potentially offensive in light of the ruling.
The USPTO said the suspension would be in effect until it has exhausted a possible appeal against the December ruling to the US Supreme Court.
Jonathan Moskin, partner at law firm Foley & Lardner, said that the case may become another instance in which Justice Antonin Scalia’s death proves consequential given his “broad readings of First Amendment principles.
“It is premature to conclude whether the Supreme Court will even grant certiorari, but the make-up of the court could be very relevant,” he added.
Katy Basile, partner at Reed Smith, said the USPTO is in “a tricky position”.
Referencing the dispute centring on trademarks belonging to National Football League team the Washington Redskins, Basile added: “With two cases offering competing contexts for trademarks that may be considered disparaging to ‘people, institutions, beliefs, or national symbols’, I expect that the Supreme Court will be deciding this issue.”
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