Federal Circuit to Rehear Key Trademark Case

Federal Circuit to Rehear Key Trademark Case

WASHINGTON — The Court of Appeals for the Federal Circuit will soon hear oral arguments in a case that could possibly change the outcome of trademark registrations for companies that seek approval for “immoral and scandalous” marks.

The case at hand, In re: Siman Shiao Tam, involves the long-running legal scrimmage over the trademark registration of "The Slants," the name of a Portland, Ore., pop-rock band whose founders and members are Asian Americans.

Upon Tam’s registration of his band’s trademark, the examining attorney at the U.S. Patent and Trademark Office found the mark The Slants disparaging and declined to register it. The Trademark Trial and Appeal Board later affirmed the examiner’s decision.

In July, the Federal Circuit agreed to rehear the case en banc after it originally sided with the examining attorney.

The rehearing, set for Oct. 3, will primarily focus on Section 2(a) of the Lanham Act and whether the provision violates the First Amendment as a viewpoint-based restriction on protected commercial speech.

U.S. trademark law gives various benefits to owners of registered trademarks, but denies registration to marks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

In the past, numerous adult entertainment companies have been denied marks for their brand names, including the recent application for "Porno Jesus," which was eventually denied by the Trademark Trial and Appeal Board.

Attorney Marc Randazza of Randazza Legal Group, who supplied an amicus curiae brief for the First Amendment Lawyers Association (FALA) in support of Tam, said that the case in front of the full panel of Federal Circuit judges should be watched closely by the adult industry.

“The trademark act bans ‘immoral and scandalous’ trademarks,” Randazza told XBIZ. “However, what that winds up meaning is whatever offends the individual examiner and her boss. It is a very arbitrary standard.  

“What it winds up doing is banning many adult entertainment marks,” Randazza said. “And, where it used to be up to interpretation whether that meant it just denied a company the right to register their mark, it now seems that it also acts as an impediment to enforcement.”  

Randazza told XBIZ that the appeal is the culmination of years of work where FALA has been pushing against Section 2(a).    

The outcome “could be big news for the industry,” said Randazza, who wrote a commentary for CNN last April on the case.

“This is important for the adult industry, since many adult entertainment companies find themselves on the down side of viewpoint discrimination when it comes to their intellectual property rights.”

View FALA's amicus brief

Related:  

Copyright © 2025 Adnet Media. All Rights Reserved. XBIZ is a trademark of Adnet Media.
Reproduction in whole or in part in any form or medium without express written permission is prohibited.

More News

FSC Drops Florida AV Lawsuit in Wake of SCOTUS Decision

A U.S. district court judge granted on Tuesday a motion by Free Speech Coalition to dismiss the trade association’s lawsuit over Florida’s age verification law, a case that had been on hold pending the Supreme Court’s recent ruling on the constitutionality of state AV laws.

Gal Ritchie Toplines Dorcel's 'Pigalle'

2025 XMAs winner Gal Ritchie stars with Clara Mia in the latest feature from Dorcel, titled “Pigalle.”

B-Vibe Spotlighted in Glamour Magazine

B-Vibe has been named Best for Anal Toys in a Glamour Magazine article on pleasure brands.

Ukrainian President Responds to Porn Legalization Petition

President Volodymyr Zelensky responded Tuesday to an OnlyFans model’s petition to decriminalize pornography in Ukraine, stating that he would wait for the legislative process to play out “in accordance with established procedure.”

Williams Trading, ANME Founders Partner for Livestream Event

Williams Trading has partnered with CalExotics, Doc Johnson, and Nasstoys to host a virtual trade show July 14-15 during ANME.

Penthouse Names Sharna Beckman July's 'Pet of the Month'

Penthouse Magazine has named Australian model Sharna Beckman as Pet of the Month for July.

Only Tax Deductions Joins Pineapple Support as Sponsor

Adult industry accounting firm Only Tax Deductions has joined the ranks of over 70 adult businesses and organizations committing funds and resources to Pineapple Support.

Adult Empire Launches 'Conversations' Podcast Series

Adult Empire has launched a new official podcast series hosted by Nicole Chappelle and Charlie.

Adult Time Names Alison Rey as Newest Brand Ambassador

Adult Time has named Alison Rey as the studio's newest brand ambassador.

Violet Myers Stars in Latest From Brazzers

Reigning XMAs Premium Social Media Creator of the Year Violet Myers stars with Mick Blue in the latest release from Brazzers, titled "Anal Exam."

Show More