Federal Circuit to Rehear Key Trademark Case

Sep 23, 2015 10:09 AM PST

WASHINGTON — The Court of Appeals for the Federal Circuit will soon hear oral arguments in a case that could possibly change the outcome of trademark registrations for companies that seek approval for “immoral and scandalous” marks.

The case at hand, In re: Siman Shiao Tam, involves the long-running legal scrimmage over the trademark registration of "The Slants," the name of a Portland, Ore., pop-rock band whose founders and members are Asian Americans.

Upon Tam’s registration 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. The Trademark Trial and Appeal Board later affirmed the examiner’s decision.

In July, the Federal Circuit agreed to rehear the case en banc after it originally sided with the examining attorney.

The rehearing, set for Oct. 3, will primarily focus on Section 2(a) of the Lanham Act and whether the provision violates the First Amendment as a viewpoint-based restriction on protected commercial speech.

U.S. trademark law gives various benefits to owners of registered trademarks, but denies registration to marks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

In the past, numerous adult entertainment companies have been denied marks for their brand names, including the recent application for "Porno Jesus," which was eventually denied by the Trademark Trial and Appeal Board.

Attorney Marc Randazza of Randazza Legal Group, who supplied an amicus curiae brief for the First Amendment Lawyers Association (FALA) in support of Tam, said that the case in front of the full panel of Federal Circuit judges should be watched closely by the adult industry.

“The trademark act bans ‘immoral and scandalous’ trademarks,” Randazza told XBIZ. “However, what that winds up meaning is whatever offends the individual examiner and her boss. It is a very arbitrary standard.  

“What it winds up doing is banning many adult entertainment marks,” Randazza said. “And, where it used to be up to interpretation whether that meant it just denied a company the right to register their mark, it now seems that it also acts as an impediment to enforcement.”  

Randazza told XBIZ that the appeal is the culmination of years of work where FALA has been pushing against Section 2(a).    

The outcome “could be big news for the industry,” said Randazza, who wrote a commentary for CNN last April on the case.

“This is important for the adult industry, since many adult entertainment companies find themselves on the down side of viewpoint discrimination when it comes to their intellectual property rights.”

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