patents and trademarks, new york lawyers


Intellectual Property Cases of Interest


Update on the In Re Tam Case

On Tuesday, March 15, 2016, Simon Shiao Tam (“Petitioner”) respectfully petitioned the Federal Circuit in a writ of mandamus, demanding an order to require the USPTO to comply with the Federal Circuit’s previous order which struck down the government’s ban on “disparaging” trademark registrations, vacating the holding of the Trademark Trial and Appeal Board (“the Board”) that Mr. Tam’s mark is unregistrable, and thus paving the way for Petitioner’s registration of the mark THE SLANTS with the USPTO.

The Court issued its formal mandate on February 12, 2016 (“Mandate”), and on March 8, 2016, the Petitioner filed a request with the Director of the USPTO that she commence “further proceedings” as ordered by the Federal Circuit. To which, the USPTO refused to comply with until all potential appeals have been exhausted or expired. Specifically, the following excerpt is from the letter issued by the Director of the USPTO in response to Petitioner’s demand for compliance with the Mandate:

Consistent with USPTO practice following a Federal Circuit decision in an appeal of a Board decision, there will be no “further proceedings” at the Board regarding [the Tam 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.

For the complete letter from the Director of the USPTO, you can visit: http://ttabvue.uspto.gov/ttabvue/v?pno=85472044&pty=EXA&eno=17

Is the Director’s rationale for suspending further proceeding, despite the Court’s order correct? Or has the Director made a serious legal error?

Stay tuned for the Federal Circuit’s decision.