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There’s more news in the constitutional fight we’ve discussed before over trademarks, rock bands, and football teams.

You’ll recall that the constitutionality of the so-called “disparagement” provision of the trademark act is an issue in the Redskins case, which is still pending in the Fourth Circuit Court of Appeals. It was also an issue in the case involving the rock band The Slants, but that case has already been decided by the Federal Circuit Court of Appeals – in the band’s favor. In late December, the Federal Circuit held that the disparagement provision is facially unconstitutional under the First Amendment. So that means the band’s application to register THE SLANTS moves forward, right? Not according to the USPTO.
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Future of Trademark Applications

In an “Examination Guide” recently issued to all examining attorneys, the director of the USPTO announced that all pending and future trademark applications subject to refusal for disparagement should be suspended “while the constitutionality of these provisions remains in question and subject to potential Supreme Court review.”

Thus, despite the Federal Circuit’s ruling, THE SLANTS trademark application has been suspended and is not moving forward to registration at this point. Noting that the Federal Circuit’s decision remains subject to potential Supreme Court review, the director’s examination guide states: “Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in Tam [the Slants case] 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.”

Rocking the Federal Circuit Process

Unsurprisingly unhappy with this result, the band recently went back to the Federal Circuit, asking the Court to order the director of the USPTO to follow the Federal Circuit’s ruling and move the application forward in the registration process. In response, to the band’s request (called a “Writ of Mandamus”), the USPTO argued that it has not taken any action inconsistent with the Federal Circuit’s ruling, because the Federal Circuit did not require the USPTO to take any particular action on the application, or act at all, by a specific date.

Noting that the USPTO has filed a request for an extension of time to file a petition seeking Supreme Court review and citing its longstanding regulations, the USPTO argued that the fact that a proceeding remains pending before a court is good cause to suspend the application. As an example, the USPTO noted that it has similarly suspended cancellation of the Redskins registrations at issue in Blackhorse v. Pro-Football, Inc. because the matter remains under review in the federal courts.

There’s lots to stay tuned for – the Fourth Circuit briefing in the Redskins case was completed in February, but oral argument has not yet been scheduled; the Federal Circuit has yet to issue its ruling on The Slants Writ of Mandamus; and the USPTO’s petition for review by the Supreme Court is now due on April 20, 2016.

(Photo credit: Maggie|darastar)