Delayed Justice: Can the USPTO Stall Implementation of Federal Circuit Decisions?

In re Simon Shiao Tam (on petition for a writ of mandamus) (Fed. Cir. 2016) [TAM_Petition_for_Mandamus_14_Mar_16]

In December 2015, the Federal Circuit ruled in Tam’s favor – holding that the Lanham Act’s prohibition against registering disparaging marks violated Tam’s free speech rights under the First Amendment.  The seeming result was that Tam would be permitted to register THE SLANTS as the mark representing his musical act.

According to Tam’s pi-day filed mandamus action, however, the USPTO Director has indicated that she will not comply with the Court’s until all potential appeals have been exhausted or expired. As such, the USPTO continues to refuse to publish the mark in the Official Gazette.  According to the petition, the following statement came from the USPTO Solicitor’s Office:

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

Of course, the USPTO is bound by law – and that law has been set by the Federal Circuit.  In this case there has been a change of the law and an express order of a “remand [of] this case to the Board for further proceedings.”  The ordinary rule is that the parties must follow the law of the case as decided even if appealing unless a stay is ordered.  The Lanham Act is not particularly helpful in this regard other than expressly indicating that, the Federal Circuit Mandate and Opinion “shall govern the further proceedings in the case.”

In all likelihood the Federal Circuit would grant a stay to the USPTO if so requested. However, I suspect that the Department of Justice would not allow that particular request — instead demanding that the USPTO has the power to delay application of Federal Circuit decisions until appeals are exhausted.  This would be an effective 90-day stay in all cases.  If the Federal Circuit orders briefing in the case, it will be interesting to hear the USPTO argue its inherent right to stay Federal Circuit orders.

Under the rules, the USPTO has already missed its 45 day timeline to request rehearing  has 45-days from the  February 12, 2016 Mandate to request rehearing en banc. The 90-days timeline for filing a petition for writ of certiorari with the Supreme Court is still pending.  Ron Coleman and his team at Archer Greiner are representing Tam in the case.

= = = = = =

Mandamus action also requires a substantial harm caused by the delay.  Here, I would balance the harm associated with wrongfully awarding the trademark rights as well.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

33 thoughts on “Delayed Justice: Can the USPTO Stall Implementation of Federal Circuit Decisions?

  1. Here, I would balance the harm associated with wrongfully awarding the trademark rights as well.

    From a legal or even a financial perspective, what harm exactly would that be?

    1. Reminds me of a certain (oft-criticized) inventor that is suing the USPTO in order to have his applications (admittedly with a super abundance of claims) examined. Applications OVER two decades sitting in the Office – from before the term of patent change of June 1995.

      😉

  2. The more I think about this issue the more it really rankles me even though it literally will probably never directly affect my life. The courts should require congress to use formal langauge to say what they formally mean in the statute, no “awww shucks guys you know what we mean” for statutory interpretating.

    “A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or”

    According to some folks what the congress really meant was:

    A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, SUCH THAT IT WAS AVAILABLE TO THE PUBLIC or WAS otherwise available to the public before the effective filing date of the claimed invention; or

    Or something to that effect. Indeed, as anon likes to point out all the time, doing this sort of thing leads to statutory construction “disasters” like the state of 101 eligibility today. And while yes, I understand the courts have to play their role in governing, and I’m aware of the tradition of common law and the rest of the facets of our legal system, at some point in the history of the law formally actually writing the law should be required of the congress. Doing this sort of thing in 2016 (as opposed to the dark ages of 1952) just really rankles me.

  3. “According to Tam’s pi-day filed mandamus action, however, the USPTO Director has indicated that she will not comply with the Court’s until all potential appeals have been exhausted or expired.”

    Hmmm, specifically the director. So an asian american director declines to register “the slants” after an adverse court ruling. Interesting twist.

    1. Doesn’t she realize that Simon Tam “took ownership” of Asian stereotypes with his super awesome band name?

      The President should personally give him the trademark, plus a Medal of Honor. This kind of courage comes once in a generation.

        1. How old are you?

          Young enough to enjoy listening to all kinds of new music, and old enough to know that The Slants stink.

          Tam promotes himself as the leader of “the first all-Asian American dance rock band in the world.” Great. So Asian Americans are “honored” with a cr xp band and an equally cr xppy name.

          Yay.

  4. According to the Federal Circuit’s reasoning, the “immoral” and “scandalous” marks must also be unconstitutional (I’ve certainly not heard any compelling arguments distinguishing the alleged First Amendment issues created by those terms from the alleged First Amendment issues created by the term “disparaging”).

    So the PTO should also presumably be registering trademarks like “Judge Moore: When You Want a Really Sh-tty Opinion From a Cracker Circuit Judge”, right?

    Freedom of Speech! Yay! Political correctness – boo!

    It’ll be so refreshing to see trademarks being used as the Framers intended, don’t you think?

      1. They can petition.

        The Court may even grant.

        They won’t win.

        (Even commercial speech carries First Amendment protections; and this case just has not made [nor can it make] the right arguments to defeat even business speech)

  5. May I suggest that so long as the government may still seek cert it may still seek cert.

    The petition needs to be dismissed without burdening the PTO with any need for a reply.

      1. The PTO’s mistake was in publicly announcing their decision to delay acting on the application. In a typical appeal, you get the mandate stayed in order to avoid the other party from taking actions in the district court (e.g., executing on a judgment) while a cert. petition is in the works. However, absent some specific direction in the mandate, nothing in the rules requires the court (or PTO) on remand to take any particular action within a given time frame. I can see district courts might take longer than the 90 day cert. petition period following a remand before doing anything further with the case.

        1. And just to be clear, my comment was to the one above arguing that the “petition needs to be dismissed.” Your point about the PTO’s mistake is well-taken, and I agree. It’s boneheaded and flouts the rule of law for the Director to publicly say that the agency will not abide by the Federal Circuit’s decision. I can guarantee you that that statement did not sit well at 717 Madison Place.

          1. Federal Appeals Court orders X to pay Y $Xmillion. X still may file cert. Y moves for contempt because X did not pay?

            This does not make sense and appears to be waste of everyone’s time.

            PTO wins appeal in reexamination. Z still may file cert. Are you saying that the PTO must issue a reexamination certificate cancelling the claims even though the time to file cert is not yet exhausted?

            Assume further that because the claims are cancelled that a lawsuit is dismissed with prejudice, even though there still is time to file suit?

            I think that all of this smacks of a lack of due process.

            A man is convicted of capital murder and has time yet to appeal. Does he have to move to stay execution pending appeal?

            1. The answer to all your hypotheticals (except the last) is yes. Certiorari is discretionary, not as of right; therefore, to avoid the effect of a judgment, you must move for a stay pending cert.

              In the last hypothetical, you mentioned time yet “to appeal.” Death sentences get automatically appealed, so the sentence gets stayed. However, if you meant “pending cert.” then the answer would also be “yes” – that’s why you always see the death penalty lawyers filing motions for stays of execution on the eve of the execution pending the Supreme Court’s consideration of their cert. petitions.

              Even in the case of money judgments, you can’t automatically avoid paying the judgment even when there is the possibility (or actuality) of an appeal as of right. You have to file a supersedeas bond, otherwise the judgment can be executed on pending appeal.

            2. A man is convicted of capital murder and has time yet to appeal. Does he have to move to stay execution pending appeal?

              Your analogy is faulty, Ned.

              Let me fill it in.

              A man is convicted of capital murder and has time yet to appeal. He does not do so (and time remains). The state schedules his execution before the running of his time for appeal. The man has read your statement and believes that he has do do nothing. The State executes him. His heirs bring suit against the State, claiming the State could not act as they did.

              What do you think happens?

              Do you still think that he does not have file a stay pending his “working on” his appeal?

  6. This is not the only case effected by the Office edict.

    The story was noted on that other blog awhile ago 😉

  7. I think there’s some confusion in the above. If the mandate from the case has issued, the Government can no longer seek rehearing en banc. It’s 45 days from the date of the judgment.

    Similar issue with the deadline for filing a cert petition. It’s 90 days from the judgment (or from denial of rehearing).

    I don’t see how the PTO has any reasonable argument it doesn’t have to comply with the decision. What a losing party on appeal would normally do, and should do, if it wants to avoid complying with the adverse ruling is file a motion to stay the mandate pending cert petition. I don’t think was done here.

      1. Thanks for the calendar lesson, but you’re missing a bit, Ned.

        The post says “Under the rules, the USPTO has 45-days from the February 12, 2016 Mandate to request rehearing en banc and 90-days for filing a petition for writ of certiorari with the Supreme Court.”

        Cert deadline is not 90 days from the Mandate, as the post suggest.

        Plus, the mere fact that a cert petition has been filed is no basis for the lower court/agency to not comply with the appellate court ruling. Lots of case law on this. Trying to avoid compliance with the adverse decision is a main reason why there’s a procedure for seeking a stay of the appellate court mandate.

        1. Hand, thanks for that. I now see the nuance and your primary dispute with the OP.

          BTW, what was the date of entry of judgment on the record?

        2. Hand, at least according to the Mandamus, the judgment was entered on December 22, 2015. That still means that cert need not be petitioned until March 21.

          1. Yes, of course the PTO still has time to petition for cert but that has no bearing on whether the PTO can ignore the Federal Circuit’s decision. If the PTO wants relief, it needs to ask the Federal Circuit to stay the mandate, or as the SCT to stay the mandate.

Comments are closed.