In "Slants" Case, Appeals Court Will Reconsider Opinion on "Disparaging" Trademarks

The Federal Circuit chose to wipe out an opinion issued last week regarding an Asian-American band.
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Just one week after the U.S. Court of Appeals for the Federal Circuit issued a notable ruling that upheld a decision to refuse a trademark registration for the Asian-American band The Slants, the appeals court on Monday elected to vacate the opinion and have the dispute heard before a larger panel of judges.

On April 20, Federal Circuit Judge Kimberly Ann Moore ruled against Slants frontman Simon Tam, who was attempting to reclaim the slur but ran into the U.S. Patent & Trademark Office's policy against conferring immoral, scandalous or disparaging marks.

In her opinion, Moore found evidence supporting a trademark examiner's conclusion that people of Asian descent were likely to be offended and cited a precedential 1981 ruling that held that "the PTO's refusal to register appellant's mark does not affect his right to use it."

In a section titled "additional views," Moore then went on to attack that precedent, finding that there were constitutional reasons to to re-examine whether the PTO should refuse disparaging marks and arguably harm free speech. The section, though, held no legal weight, but it probably was well read by attorneys for Washington Redskins owner Dan Snyder, who is currently before the same appellate circuit challenging the PTO's decision to cancel the "Redskins" mark.

If an appellate judge who essentially writes her own dissent is surprising, the case just got even more odd upon the Federal Circuit's new move to throw out an opinion issued just in the past week. According to an order today, the judges at the circuit were polled and have chosen to hold a sua sponte hearing en banc with amici curiae briefs being entertained as well.

This adds up to a new hearing that will be held — one that will have fans of both professional football and entertainment paying attention as the future of trademark registrations like "Redskins," "Madonna wine," "Dykes on Bikes" and "Heeb Media" get determined.