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.”