Today, the USPTO made it official: It formally requested the U.S. Supreme Court to review the en banc Federal Circuit decision that held Section 2(a) of the Lanham Act violated the First Amendment. The USPTO’s Petition can be found here.
At issue in the case is whether Mr. Simon Tam is entitled to a federal trademark registration for the name of his all Asian-American rock band, “The Slants.” The Trademark Trial and Appeal Board denied the registration holding that such a name would be disparaging to Asian Americans. A panel of the Federal Circuit upheld that decision. Late last year, however, the full Federal Circuit reversed that panel decision and found that denying Mr. Tam his registration was an unconstitutional content-based restriction.
The USPTO’s petition takes aim at the Federal Circuit’s holding and essentially argues that Section 2(a) does not impinge Mr. Tam’s First Amendment rights. Instead, claims the USPTO, the Lanham Act’s prohibition on disparaging marks represents the orderly administration of justice. While the decision restricts registration of the name, it does not in any way prohibit Mr. Simon or his band from using the band’s name, or so goes the USPTO’s argument:
[Section 2(a)] does not prohibit any speech, proscribe any conduct or restrict the use of any trademark. Nor does it restrict a mark owner’s common-law trademark protections…Rather, [Section 2(a)] directs the PTO not to provide the benefits of federal registration to disparaging marks.
The Petition also argues that the Federal Circuit’s decision would cause a radical shift in settled practice at the PTO:
The question presented is important. The statutory provision at issue here has guided the PTO’s decisions for 70 years. Absent this Court’s review, the Federal Circuit’s ruling will effectively resolve the validity of Section 1052(a)’s disparagement provision nationwide because any applicant for trademark registration may obtain judicial review of an adverse decision of the PTO in that court. The petition for a writ of certiorari should be granted.
Mr. Tam and his legal team have a month to respond to the Petition.