USPTO must publish ‘The Slants’ application, band tells CAFC

US rock band The Slants has urged an appeals court to force the US Patent and Trademark Office (USPTO) to act on the court’s ruling and process a trademark application by the band for its name.

In a writ of mandamus filed at the US Court of Appeals for the Federal Circuit yesterday, March 14, attorneys for The Slants said the application should be published for opposition and that the USPTO has made a “serious error in law” by “flatly refusing to comply with rulings”.

The writ has asked the court for an order that would require the USPTO to publish the application.

The band’s trademark application for the term ‘The Slants’ 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.

Earlier this month, WIPR reported that the commissioner for trademarks, Penny Pritzker, then sent an “informal directive” to examiners stipulating that any application for a mark that potentially violates the Lanham Act should in fact be “suspended”.

But the writ claimed that the USPTO does not have the power to ignore a court order until all possible review courts have voted on the issue.

The writ demands that the application is published for opposition and that the USPTO “in all other respects” processes the application without respect to the ‘disparagement’ provisions “in any regard whatsoever”.