Court Asked to Order USPTO to Comply With Trademark Ruling

Court Asked to Order USPTO to Comply With Trademark Ruling

UPDATE: On Tuesday afternoon, the U.S Court of Appeals for the Federal Circuit ordered the USPTO director to respond to The Slants' petition no later than March 23.

WASHINGTON — The Slants, the band that won a key decision striking down a ban on “disparaging” trademark registrations, asked an appeals court today to force the U.S. Patent and Trademark Office to comply with the ruling.

The case delivered to the U.S Court of Appeals for the Federal Circuit involves the trademark application of "The Slants, " the name of a Portland, Ore., pop-rock band whose founders and members are Asian Americans.

Upon Simon Tam’s application 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.

But in December the Federal Circuit ruled that the U.S. government can’t deny trademarks over offensive names.

December’s ruling was hailed as a big victory for not just The Slants, but for companies in the adult entertainment business that might use rough-and-tumble jargon to describe their products and services.

The decision, experts said at the time, invited a challenge to the “immoral and scandalous” clause for trademarks that most affects the adult entertainment industry.

Today, the Oregon-based rock band filed a petition for a writ of mandamus with the appeals court, demanding an order that would require the USPTO to publish the band’s trademark registration for “The Slants.”

According to counsel for The Slants, the USPTO director has “made a serious error in law and abused her discretion by flatly refusing to comply” with the December ruling.

The Slants attorneys said in the writ that the director refused to immediately approve the band’s application because the USPTO may plan to petition the U.S. Supreme Court over the matter.

“Consistent with USPTO practice following a Federal Circuit decision in an appeal of a board decision, there will be no ‘further proceedings’ at the board regarding [the Tam application] until the last of the following occurs: 1) the period to petition for a writ of certiorari (including any extensions) in In re Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision,” the USPTO told The Slants’ attorneys in a response over the application denial.

Adult industry attorney Marc Randazza told XBIZ this morning that essentially the USPTO has decided "we would rather not” follow the Constitution.

“When the government is violating the Constitution, it doesn’t get to just say ‘we would rather not’ follow it,” Randazza said. “If they sought a stay, and the stay was granted, that’s another story.

“The USPTO has always been pathologically uptight about this kind of thing.”

View today's writ filed with Federal Circuit

Related:  

Copyright © 2024 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

Justices Alito, Thomas Invoke Victorian-Era Morality Law, Raising Censorship Concerns

Several national publications reported this week on widespread concern among Free Speech advocates after U.S. Supreme Court Justices Samuel Alito and Clarence Thomas repeatedly invoked during a hearing the infamous segregation-era law the Comstock Act, which was the cornerstone of U.S. censorship of sexual material from the 1870s until the 1970s.

TeamSkeet Releases 1st Installment of 'Ripe for the Taking'

TeamSkeet has released the first installment of its latest feature, "Ripe for the Taking," starring TeamSkeet March AllStar Scarlett Alexis.

LELO Launches 'Masturbitter' Craft Beer to Promote Male Sex Talk

LELO has partnered with Great Beyond Brewing Company to launch Masturbitter, a craft beer, to encourage men to discuss sex.

Skinfluential Management's FansFuel Acquires Fanwire

Creator stats and affiliate marketing platform FansFuel has acquired creator account management tool Fanwire.

Pineapple Support Taps Kasey Kei as Brand Ambassador

Pineapple Support has named veteran performer and content creator Kasey Kei as its latest brand ambassador.

Nebraska AV Bill Moves Forward Despite Privacy, Free Speech Concerns

Nebraska’s unicameral Legislature has given first-round approval to LB 1092, the state’s version of the age verification bills being sponsored around the country by anti-porn religious conservative activists.

Eva Maxim, Katrina Colt Headline 'Cumming to LA' From Cherry Kiss

Eva Maxim and Katrina Colt star with Vince Karter in 2021 XBIZ Europas Female Performer of the Year Cherry Kiss' "Cumming to L.A.," from Evil Angel.

AEBN Celebrates 25th Anniversary

The Adult Entertainment Broadcast Network (AEBN) is celebrating its 25th year in business this week.

Performers in Meta Blacklisting Lawsuit Seek to Preserve Antitrust Claims

Adult Performance Artists Guild board officers Alana Evans, Kelly Pierce and Ruby have informed a California court that, although they want to drop their lawsuit claiming that Meta conspired with OnlyFans to blacklist rival premium fan platforms’ talent, they may still pursue antitrust claims in the future.

Xgen Now Shipping ZOLO's 'Stroke Off' Collection

Xgen Products is now shipping the Stroke Off collection of 11 handheld strokers and four masturbators modeled after lifelike body parts.

Show More