The Slants’ Trademark Application Remains in Purgatory as Federal Circuit Passes on Pushing PTO to Publish

Dorsey & Whitney LLP

Late last year, Simon Tam and his legal team scored a big-time victory:  they convinced the U.S. Federal Circuit Court of Appeals (sitting en banc) that Section 2(a) of the Lanham Act violated the First Amendment.  The Court remanded the case to the TTAB for “further proceedings.”  As we noted here, this ruling paved the way for Mr. Tam to complete the registration process for the name of his all Asian-American rock band, The Slants.  Or so we thought.  The Court’s watershed opinion issued on December 22, 2015.  The Court’s “mandate” followed thereafter on February 12, 2016.  Almost a month later, the PTO had still not taken any action on Mr. Tam’s application, such as publishing it for opposition.  Mr. Tam’s lawyers formally inquired of the PTO as to what its intentions were with respect to the application.   The Office of the Solicitor for the PTO responded to Mr. Tam on March 11, 2016:

The Federal Circuit’s decision in In re Tam remains subject to potential Supreme Court review. 28 U.S.C. §1254. … 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.

Unofficial translation: “Nothing is happening anytime soon on your application, Mr. Tam.”  Displeased with the PTO’s inertia, Mr. Tam filed an “extraordinary” remedy with the Federal Circuit–A Petition for a Writ of Mandamus.  The Petition requested that the Court direct the PTO to: (1) publish the application; and (2) in all other respects process the application without respect to the disparagement provisions of Section 2(a).  The PTO responded by essentially stating that its refusal to take action on the application was standard operating procedure until all final appeals had been exhausted.

Here’s how the Federal Circuit ruled:

The PTO suspended proceedings in this case until such time that its appeal rights before the Supreme Court of the United States have been exhausted. The remedy of mandamus is available only in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461, 464 (Fed. Cir. 1988). We find no clear abuse of discretion in the Director’s determination in this case to suspend the matter pending possible further proceedings before the Supreme Court.

So, Mr. Tam will have to wait for now.  Perhaps he can take solace in the immortal words of another rock band, Guns n’ Roses: “all it takes is patience, just a little patience is all you need.”

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Dorsey & Whitney LLP

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