[co-author: Lisa Bollinger Gehman]
In the continuing saga of whether Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment, the rock band The Slants will have to wait a little longer before it knows whether it can register its trademark THE SLANTS. The Slants, a band composed of Asian-American musicians, has received a significant amount of press ever since its trademark application, filed by band member Simon Tam, was refused registration on the basis that the mark is disparaging to people of Asian-American descent. Section 2(a) of the Lanham Act bans the registration of such marks. 15 U.S.C. § 1052(a). In 2013, the Trademark Trial and Appeal Board affirmed the refusal in In re Tam, 108 U.S.P.Q.2d 1305 (T.T.A.B. Sept. 26, 2013).
Tam appealed to the U.S. Court of Appeals for the Federal Circuit, challenging the constitutionality of Section 2(a). The Federal Circuit rejected Tam’s First Amendment, vagueness, due process, and equal protection arguments, following the precedent of In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), which held that the refusal to register a mark does not prohibit use of that mark, and thus an applicant’s First Amendment rights are not implicated. Notably, the panel requested an en banc Federal Circuit to revisit the McGinley rule and review its decision, which opened the door for the full court to address the issue of whether Section 2(a) of the Lanham Act violates the First Amendment. In re Tam, 785 F.3d 567 (Fed. Cir. 2015) reh’g en banc granted, opinion vacated, 600 F. App’x 775 (Fed. Cir. 2015).
On December 22, 2015, after an en banc review, the Federal Circuit issued its landmark ruling, holding Section 2(a) unconstitutional because it violates the First Amendment. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), as corrected (Feb 11, 2016). While seemingly a “victory” for the band, the ruling did not translate into federal registration of THE SLANTS.
Accordingly, on March 8, 2016, Tam requested that the Director of the U.S. Patent and Trademark Office (PTO) comply with the mandate of the Federal Circuit. In response, the Acting Solicitor of the PTO advised Tam that there would be no further proceedings until: “(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.” In response, Tam filed a petition for a writ of mandamus, asking the Federal Circuit to issue an order requiring the PTO to comply with the December ruling. In denying Tam’s request, the Federal Circuit held that a writ of mandamus is a rare remedy and is “available only in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power.” Because the PTO has until April 20, 2016, to file a writ of certiorari with the U.S. Supreme Court, it was not an abuse of discretion for the PTO Director not to act on the Federal Circuit’s order.
This case continues to be closely watched, particularly because of its importance to cases involving trademark registrations that have been cancelled under Section 2(a). Stay tuned.