USPTO: ‘The Slants’ decision extends to scandalous and immoral TMs

The US Patent and Trademark Office (USPTO) has said an appeal court’s decision to strike out the disparagement provision in the Lanham Act by ruling in favour of US band The Slants also wipes out provisions barring the registration of scandalous and immoral trademarks.

Last month in Re:Tam, the US Court of Appeals for the Federal Circuit ruled that musician Simon Shiao Tam’s application for his band’s name ‘The Slants’ can be registered as a trademark.

Previously, citing section 2(a) of the Lanham Act, the Trademark Trial and Appeal Board (TTAB) said that because the applied-for mark was “disparaging” the application should be rejected.

A Slant is a disparaging term for someone of Asian heritage.

But the federal circuit ruled en banc that section 2(a), which concerns disparaging marks, was a violation of the First Amendment.

The court did not specifically rule on the rest of section 2(a) which covers scandalous and immoral marks.

But according to lawyers representing the USPTO, the federal circuit’s ruling applies to the whole section.

In a letter sent to the federal circuit on January 21, the lawyers said: “Although a court could draw constitutionally significant distinctions between these two parts of section 2(a), we do not believe, given the breadth of the court’s Re:Tam decision and in view of the totality of the court’s reasoning there, that there is any longer a reasonable basis in this court’s law for treating them differently.”

The letter centred on the TTAB’s refusal to grant artist Erik Brunetti a trademark covering the term ‘fuct’ on the grounds that it was immoral in 2014.

The USPTO has requested that the federal circuit remand the case back to the TTAB in light of the Re:Tam ruling.

The USPTO added that it is currently reviewing whether it will appeal to the US Supreme Court.