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.
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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.