PTO Not Forced to Move on ‘Slants' Trademark Registration

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By Anandashankar Mazumdar

March 30 — The Patent and Trademark Office won't be forced to immediately proceed with registration for “The Slants” as a trademark for an Asian-American rock band, the U.S. Court of Appeals for the Federal Circuit ruled March 30.

The PTO has not abused its discretion in putting the registration application, and others like it, on hold, while it considers petitioning the Supreme Court, the court said.

West Coast musician Simon Shiao Tam filed a petition for a writ of mandamus, asking the appeals court to order the PTO to proceed with the registration process immediately .

The PTO has suspended consideration of applications for scandalous or disparaging trademarks while it decides whether to seek Supreme Court review of the matter .

Free Speech Issue Might Go to Supreme Court

Tam said he took up the name “Slants” in order to “take back” a derogatory term for Asian-Americans.

But the PTO said it could not register the trademark because of Section 2(a) of the Lanham Trademark Act of 1946, 15 U.S.C. §1052(a), which bars registering—among other things—scandalous or disparaging words.

In December, the Federal Circuit found Section 2(a) to be a violation of the First Amendment .

Earlier this month, the PTO asked for a 30-day extension to file a petition asking the Supreme Court to overturn the Federal Circuit ruling. The deadline to file is now April 20.

Ordinarily, the agency would get 90 days to ask the Supreme Court to review the ruling.

Judges Alan D. Lourie, William Curtis Bryson and Kimberly Ann Moore issued the ruling.

Archer & Greiner P.C. represented Tam. The U.S. Department of Justice and the PTO's Office of the Solicitor represented the PTO.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

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Text is available at: http://src.bna.com/dIQ.