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

Sinatra Monroe Toplines New Digital Playground Comedy 'Single Minded'

Sinatra Monroe headlines the new comedy feature from Digital Playground, titled "Single Minded."

Adult Time Launches New Series 'Preggo World'

Adult Time has released the first episode of its new series “Preggo World,” titled “18 & Pregnant.”

Alexis James Makes Her Tushy Raw Debut

Alexis James has made her debut for Vixen Media Group (VMG) studio imprint Tushy Raw, alongside Victor Ray.

Tyler Wu Guests on Chaturbate's 'Sex Tales' Podcast

Tyler Wu is the latest guest on Chaturbate’s “Sex Tales” podcast, hosted by Melissa Stratton and Vanniall on the company’s “Camming Life” YouTube channel.

Lucy Hart Stars in Mainstream Slasher Flick 'Director's Cut'

Long-time performer Lucy Hart has stepped outside the world of adult, starring in a new mainstream slasher movie, "Director's Cut," that premiered this weekend in theaters across the U.S.

Fleshy to Launch Interactive Cam Site 'Eremote'

Male pleasure brand Fleshy has announced that it will launch an interactive, bidirectional cam site next month called Eremote.

Rae Lil Black, Rikako Katayama Star in Latest From Vored

Rae Lil Black and Rikako Katayama star in the latest release from Hentaied.pro studio brand Vored, titled "Sinful Taste."

XBIZ LA Show Introduces New 'Crib Crawl' Feature

XBIZ is pleased to announce that the 2025 edition of its flagship conference, the XBIZ Show, will debut a brand-new feature: Crib Crawl, offering attendees the chance to meet and greet representatives from leading brands and organizations in dedicated suites at the host venue.

Sage Hunter Makes Her Hookup Hotshot Debut

Sage Hunter has made her Hookup Hotshot (HUHS) debut alongside studio honcho Bryan Gozzling.

Gal Ritchie: From British Dominatrix to Rising L.A. Starlet

Gal Ritchie left her home in the U.K. and arrived in Los Angeles on Aug. 12, 2023. She remembers the exact date because it was such a key moment in her life.

Show More