4 March 2016Trademarks

USPTO ‘asks examiners’ to suspend offensive trademarks

The US Patent and Trademark Office (USPTO) has reportedly advised examiners to suspend trademark applications that are potentially offensive in light of the US Court of Appeals for the Federal Circuit’s In re Tam ruling.

The guidance comes ahead of the US Supreme Court’s expected review of the case.

According to the IPWatchdog blog, the commissioner for trademarks has sent an “informal directive” to examiners that says any application for a mark that potentially violates the US’s trademark law, the Lanham Act, should be “suspended” until the Supreme Court takes up the case.

In a decision handed down in December last year, an en banc federal circuit said that musician Simon Tam’s application for his band’s name ‘The Slants’ can be registered as a trademark.

The decision overturned previous rulings from a USPTO examiner, the office’s Trademark Trial and Appeal Board (TTAB) and a three-judge federal circuit panel.

In their decisions the TTAB and federal circuit said that allowing a trademark for the term, which is a slang word for a person of Asian heritage, would violate section 2(a) of the Lanham Act—which prevents the registration of immoral, deceptive, scandalous or disparaging marks.

Tam claimed that denying the band trademark rights was a violation of First Amendment rights.

Although the In re Tam decision was limited to the “disparagement” provision in section 2(a), the new directive apparently applies to all section 2(a) bases for refusal, IPWatchdog said.

Tam told WIPR that, if the reports are to be believed, it “seems troubling from a procedural perspective that a commissioner would defy federal court orders, if that is in fact what is happening”.

He added that the USPTO is “showing its hand” by having an interest in filing a writ at the Supreme Court.

“They want to take this all the way,” he said.

Earlier this year, WIPR reported that lawyers representing the USPTO wrote to the federal circuit telling the court that its ruling applied to the entire section 2(a) of the Lanham Act.

In the January 21 letter, 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 In 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 USPTO asked the federal circuit to remand the case back to the TTAB in light of the ruling and added that it is currently reviewing whether it will appeal to the Supreme Court.

The USPTO declined to comment.

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More on this story

31 March 2016   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 to process a trademark application.
21 April 2016   The US Patent and Trademark Office has petitioned the US Supreme Court, asking it to review a lower court decision that said denying rock band The Slants a trademark for its name would violate First Amendment rights.