Federal Circuit will hear The Slants case en banc

The US Court of Appeals for the Federal Circuit has said it will re-assess a trademark case in which it upheld a decision by the US Patent and Trademark Office (USPTO) to reject an application for a “disparaging” trademark.

The court agreed today (April 27) to re-hear a case brought by US rock band The Slants en banc—before its full set of 11 judges.

In 2013, the USPTO rejected the band’s application to trademark its name on the grounds that it was offensive to people of Asian heritage.

In a 3-0 decision on April 17, the federal circuit upheld the USPTO’s decision.

Although Simon Shiao Tam, the band’s lead singer, told WIPR last week that he would ask for a review en banc, the court announced it would be re-hearing the caseregardless.

Speaking to WIPR, Tam said: “This new development is definitely surprising. The court beat us to the punch of actually filing a request for an en banc review. There’s no doubt that this was influenced by [Judge Kimberley] Moore’s additional views published in the opinion last week.

“We’re excited about the opportunity to expand our arguments and challenge the wrong and unconstitutional decision by the USPTO,” he added.

The federal circuit has requested that both parties submit briefs addressing whether rejecting a “disparaging” trademark violates First Amendment rights.

A date for the next hearing has not yet been confirmed.

The court’s decision to re-hear the case follows a Moore’s additional comments in the first decision, although she had actually voted with the other judges.

Moore, one of the three judges presiding over the case, wrote an opinion that raised questions about the decision to reject the application.

Moore argued that: “It is time for this court to revisit McGinley’s holding on the constitutionality of the Lanham Act.”

In the McGinley case (McGinley v US States Court of Customs and Patents Appeal), the federal circuit ruled in 1981 that the prohibition of registering an offensive trademark does not violate First Amendment rights, because the individual or business is still allowed to use the name.

The McGinley case is precedential and is referred to by the federal circuit when it makes decisions on the issue of ‘disparaging’ trademarks.

In order to overturn a precedential decision, all 11 judges have to be present.