Originally posted 2013-10-25 12:41:04. Republished by Blog Post Promoter
There has been some press coverage of the intention of my client, The Slants, to appeal the denial of their application to register THE SLANTS. Some of what has been reported is inaccurate or imprecise. This is not the place to argue the appeal, but because the case has garnered some extra-judicial attention and there has been a great deal of extra-judicial misunderstanding, here is a bit of clarification:
This is an appeal from the determination of a federal agency, so under 28 USC § 2107(b) the time to appeal is 60 days after the September 26, 2013 date of the order. (This differs from the usual 30 day deadline to appeal from a court order under 28 USC § 2107(a)). See below for a link to the brief we filed.
Now, some reports and commentators have given the impression that the applicant is fighting the PTO’s conclusion that “slants” is an ethnic slur, or that the Slants argue that it was one in the past but is not one any more, along the lines of the unsuccessful TTAB appeal of the PTO’s denial of the HEEB application.
This is error. That was not the applicant’s argument in the TTAB with respect to the application that was actually denied in this proceeding — here’s the Slants’ TTAB brief. I tried to get that across in this earlier post, but I will try again:
The assertion that “slants” is not an ethnic slur, based on evidence that contradicts what the PTO claimed as the evidentiary basis for its determination, was the applicant’s argument — but that was in an earlier application for the same trademark. Indeed, rejection of that argument was, we assert, one basis of the TTAB’s affirmance of the PTO’s refusal to register. We argued in our TTAB brief that in refusing to allow the registration based on the Slants’ second application — the one before the TTAB — the PTO rejected an argument the Slants did not make in its response to the Office Action.
This is not to say that the applicant concedes the underlying substantive point. It does not, but this is not the subject of the appeal.
Rather, we argued before the TTAB that the PTO failed to base its “disparaging mark” refusal on competent evidence pursuant to the Trademark Manual of Examining Procedure (TMEP).
The burden of proof with respect to a denial under Section 2(a) is on the PTO. But the PTO relied on factual assertions about the applicant’s use that were stale, not having been updated since the first application; it merely cut and pasted these, so that the PTO failed even to consider if there was any change in “the actual use of the mark” since the first application and refusal. Because of this, we argued, the actual use of the mark did not seem to matter as long as the person using it was Simon Tam, the Asian-American leader of the band. To the extent his ethnic identity provided, however, “all the use we need to know” — i.e., use by this Asian, or arguably any Asian, of an otherwise neutral word rendered that word “disparaging” — we argued that this was not a proper legal standard.
We also argued that the PTO’s refusal was based on very unreliable third-party sources and, contrary to the requirement of the TMEP, that it cherry-picked its citations to reach a predetermined conclusion. You can see how we attempted to demonstrate this in the brief, too.
The planned appeal will address the TTAB’s disposition of these arguments, as well as other issues concerning the statute and its application such as may be considered by an appellate court.
Finally, as the TTAB opinion itself made clear, it made no determination — nor could it — as to whether THE SLANTS is “a trademark” of The Slants — which it most assuredly is. If you are not clear on the difference between “a trademark” and a “trademark registration,” start here.
UPDATE MORE (January 8, 2015): Oral argument was, January 9, 2015. Here is a link to the audio.