A full Federal Circuit hearing for October 2015 to hear oral arguments.

The provision the courts are referring to is , which prohibits registrations of marks that are scandalous or immoral. The U.S. Patent and Trademark Office (PTO) uses a two-prong test to test if a mark is disparaging. First it examines what the likely meaning of the mark is. Then it determines if that meaning refers to an identifiable group and whether it is disparaging to a substantial composite of that group.

The Lanham Act has allowed for the definition of scandalous, immoral or disparaging trademarks to be left up for debate. However, the statute is not unconstitutionally vague: .

The reopening of The Slants’ case has ignited debate regarding how far governments can go in restricting an individual’s’ right to free speech with regards to trademarks. How the courts proceed in this case will have far reaching implications for the future and could result in a fundamental change of practice regarding the treatment of disparaging marks.

The band for a trademark in 2010  in their explanation of why “The Slants” is derogatory. Originally, the group’s lead singer Simon Tam said the band’s name was not a reference to it’s members’ Asian-American ethnicity, but rather to musical chords. In with TIME magazine, Tam argued that naming the band "The Slants" was reclaiming the word from any derogatory meaning.

As a part of the defense’s argument, Tam’s lawyers  conducted by professors from Illinois’ North Central College and New 91��ɫ which polled members of the Asian/Pacific Islander community. This survey was done in support of Tam’s trademark registration and in it the statement “I find the name of the group The Slants to be disparaging” was posed. 16 percent of participants agreed with the statement while 46 percent disagreed (the remaining 38 percent stated they neither agreed nor disagreed). When participants were asked to answer the question under the presumption that membership of the band was exclusively Asian-American, a majority of respondents agreed they did not think the name is disparaging.

to refuse a trademark registration writing in her ruling that “The Slants would be perceived as offensive by a substantial fraction of Asians”.

However,  Justice Moore attacked a precedential 1981 ruling which allows individuals the right to use their mark despite PTO’s refusal to register it.  there were constitutional reasons to re-examine whether PTO should refuse disparaging marks and arguably harm free speech. This “additional views” section holds no legal weight, but points to a possible shift in the courts’ opinions on disparaging marks.

With the possibility for a shift in the way the U.S. deals with disparaging trademarks, over whether this could change rulings of similar cases, including the Washington Redskins' trademark dispute. Earlier this month a by the federal Trademark Trial and Appeal Board cancelling the team's trademark registrations after its name was deemed disparaging to Native Americans. However, until this new Federal Circuit hearing has taken place, the influence The Slants' case will have is still unclear.

Would The Slants’ fate be any different if they had registered their trademark in Canada? Unlike American law, which allows applicants to continue using their mark even if it is rejected by the trademark office, .

Setting the benchmark for what is perceived as offensive “by a substantial fraction of an identifiable group” is difficult in countries as diverse as the United States and Canada. Of course there are instances where it is obvious whether a term or word is offensive to the majority of a group. However, there are many situations where it is not quite as clear.

As both countries continue to become more diverse, the idea of what is offensive and what is not will blur even further. This raises the question of whether governments should still tightly oversee whether a mark is disparaging. The time and place for governments to closely dictate what is offensive may no longer be needed. In today’s world, individuals turn to online channels to express their disdain for something they deem offensive or rally the masses to boycott a company and/or product. Could the same not work for trademarks? Sure, we can grant a person protection to their mark but it is only useful if individuals are willing to buy goods or services bearing that mark. As Moore J suggested, maybe it is time we re-examine the extent to which a government has the ability to refuse a mark and allow the citizens themselves to decide whether it is truly offensive.

Samantha Sim is an IPilogue Editor and a graduate of Ryerson University's School of Journalism.

The post New Developments in Trademark Dispute of Asian-American Rock Band "The Slants" Reignite Free Speech Debate appeared first on IPOsgoode.

The case concerned whether Myriad’s patents, describing the composition of isolated DNA molecules and methods of isolating and analyzing genes used to detect certain types of breast and ovarian cancers, are patent eligible in light of the recent ruling of (Mayo). Patent eligibility in the United States is defined by . The United States Court of Appeals for the Federal Circuit had originally reviewed the patents in July 2011, before the United State Supreme Court’s holding in Mayo. During their original review, the Court found that Myriad’s composition based claims, the claims covering the actual isolated genes themselves, were patent-eligible. In contrast, Myriad’s patent claims covering comparison and analysis were almost all patent-ineligible. The original ruling was a 2-1 split decision with Justice Bryson stating in dissent that genes and their fragments were also patent-ineligible. The decision was appealed to the United States Supreme Court.

The Mayo decision was handed down nine months later, in March of this year. In this decision, covered in a guest blog on IP Osgoode , the Supreme Court ruled that the method claims found within Prometheus Laboratories’ patents were not eligible for patent protection because the claims were based on laws of nature, a patent-ineligible subject matter. In light of the Mayo decision, the Supreme Court remanded the Myriad case back to the Court of Appeals for reconsideration.   expected the Supreme Court decision to remove the legal foundation that the original Myriad ruling was built on, as human genes could be considered products of nature. Instead, the U.S. Court of Appeals for the Federal Circuit respectfully held that the Mayo decision would not alter their judgement against Myriad’s patents.

In the decision by the Court of Appeals, the majority relied on precedent established in (Chakrabarty) and (Funk Bros.) to help determine how patent-eligibility laws, specifically 35 U.S.C. § 101, should be interpreted in regards to Myriad’s composition patents. In Chakrabarty, the U.S. Supreme Court recognized bacteria engineered to break down different components of crude oil as patent-eligible. The Court found that because the claim was to a non-naturally occurring manufacture or composition of matter that was the product of human ingenuity, the claim was patent-eligible. In Funk Bros., the U.S. Supreme Court held that a grouping of unmodified bacteria was not patent-eligible as the aggregation of species did not make any of the species acquire a different property or use. Applying both of these precedents to the case at hand, the Court found that the composition patent claims, covering isolated human genes, were valid under 35 U.S.C. § 101 as they “are markedly different—have a distinctive chemical structure and identity—from those found in nature”. Although stating that the Mayo decision did not modify their holding, it should be noted that the Court of Appeals’ decision to hold the majority of Myriad’s method claims as patent-ineligible falls in line with the Mayo ruling. In Myriad, the Court of Appeals found that method claims that simply ‘analyze’ or ‘compare’ patent-eligible subject matter are not themselves patent-eligible as they only claim abstract mental processes. The only claim that escaped this judgement, claim 20 in U.S. Patent 5,747,282, included “transforming” the inputs of the method before analyzing, which in the Court’s eyes was more than simply applying a law of nature.

Also of interest in the instant case was the conflict between the government’s role and the role of the United States Patent and Trademark Office (USPTO). The USPTO was a defendant, while the government, as amicus curiae, argued that that human-engineered DNA molecules are eligible for patent protection, but isolated and unmodified genomic DNAs, like those targeted by Myriad’s patents, are not. In their ruling, the majority stated a desire to defer the issue to Congress and to allow the USPTO to continue to issue patents relating to DNA molecules as they have been for 30 years. In dissent, Justice Bryson raised an argument that the government’s position undermines that of the USPTO and therefore the issue should not be deferred.

This is a very contentious decision as it involves the patent-eligibility of naturally-occurring human genes. There are strong that this subject matter should not be patentable, while others claim that the subject matter’s “” make it patent-worthy. The ACLU, who was represented in this case, has stated that the ruling “.” Myriad, however, and believes that their gene patents have not hindered research on the DNA sequences that they cover. It is that this case will be appealed to the United States Supreme Court.

Mark Bowman is a JD Candidate at Osgoode Hall Law School.

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