In re Tam; En Banc Victory to Agency Purgatory
Simon Shiao Tam, the “front man” of The Slants, an Asian-American rock band, has been pursuing a trademark for his band’s name since 2011.[1] He has faced great opposition, his application being refused for years because of a prohibition against disparaging trademarks contained in §2(a) of the Lanham Act.[2] Following a December 2015 judgment by an en banc Federal Circuit finding that this prohibition violates the First Amendment to the Constitution,[3] it appeared that Tam might soon find relief. As of the date of this writing however, the U.S. Patent and Trademark Office (“the USPTO”) has refused to take action on Tam’s 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.”[4]
On March 14, 2016, Tam petitioned the Federal Circuit for a writ of mandamus ordering the USPTO to process his application in accordance with the Federal Circuit’s ruling.[5] Tam argues that a writ of mandamus should issue because “[t]he Director has made a serious error in law and abused her discretion by flatly refusing to comply with rulings and mandates of this Court.”[6]
Tam argues that the “law of the case” doctrine dictates that once the Federal Circuit issued its decision, the USPTO had no choice but to reopen proceedings and, absent new grounds for refusal, publish Tam’s trademark in preparation for registration.[7] Tam cites the ruling in Board of Trustees v. Houndstooth Mafia Enterprises LLC, in which the Northern District of Alabama held that “the mandate rule requires the TTAB to follow, rather than reexamine (or worse, ignore), this court’s final judgment.”[8] Tam argues that the USPTO is bound by the ruling of the Federal Circuit in the same manner that the Trademark Trial and Appeal Board (“the TTAB”) was bound by the ruling of the District Court in Houndstooth Mafia.[9] Accordingly, Tam cites the Lanham Act’s appeal provisions, which provide that judgments made by the Federal Circuit in cases on appeal from the USPTO “shall be entered of record” and “shall govern the further proceedings in the case.”[10]
On March 23, the USPTO filed its response to Tam’s petition. It argues, inter alia, that “The USPTO has broad discretion to manage its own docket.”[11] The USPTO principally relies on 37 CFR § 2.67, which empowers the agency to suspend action indefinitely if a trademark application is the subject of a court proceeding that might affect the registrability of the mark.[12] It argues that its policy of suspending actions until a relevant question of law is finally settled by the judiciary protects against situations in which individual agency decisions must be reversed multiple times as a case proceeds through the appeals process.[13] The USPTO notes that it has been consistent in applying this regulation, having never effectively canceled the trademarks belonging to the Washington Redskins football team even after a final determination by the TTAB that those marks should be canceled.[14]
It is unclear if the Federal Circuit will grant Tam’s petition. Regardless, with the April 20th deadline for submission of a petition for writ of certiorari to the Supreme Court[15] fast approaching, we can likely expect some action from the USPTO in the near future.
Footnotes
