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Disparaging Trademarks and the Constitutionality of Refusing Registration Under the Lanham Act

White & Case Technology Newsflash

Disparaging trademarks have been the subject of vocal debate for over twenty years, but this debate has come to a head recently over the cancellation of the registration of the infamous "Redskins" trademarks belonging to the Washington Redskins professional football team. The legal issue so hotly contested is whether prohibiting registration of trademarks based on their potentially disparaging nature, i.e., their content and any viewpoints espoused thereby, violates the freedom of expression granted by the First Amendment of the United States Constitution.

On Wednesday, July 8, 2015, the District Court for the Eastern District of Virginia added one more opinion to the stack of recent decisions discussing the interplay of Section 2(a) of the Lanham Act ("Section 2(a)") with the First Amendment.[1]  The Court granted summary judgment in favor of several individual defendants seeking affirmation of the Trademark Trial and Appeal Board's ("TTAB") decision to cancel registration of the "Redskins" trademarks on the grounds that the marks may be disparaging to Native Americans and thus do not qualify for federal registration under Section 2(a), which states:

"No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…."
Lanham Act, Section 2(a), 15 U.S.C. §1052.

In his de novo review, Judge Gerald Bruce Lee found that the plaintiff, Pro-Football, Inc., did not have a viable claim that Section 2(a) violates the First Amendment and that the TTAB was authorized to cancel registration of the "Redskins" trademarks under Section 2(a) because they may be disparaging to Native Americans.  Judge Lee determined that Section 2(a) does not violate the First Amendment, as refusal to register a mark under Section 2(a) impacts only federal registration of the mark in question and not a mark owner's ability to continue using the mark and to avail itself of common law protections afforded to unregistered marks: "Simply put, the Court holds that cancelling the registrations of the Redskins Marks under Section 2(a) of the Lanham Act does not implicate the First Amendment as the cancellations do not burden, restrict or prohibit [Pro-Football, Inc.'s] ability to use the marks."[2]   Judge Lee also held that "the federal trademark registration program is government speech and is thus exempt from First Amendment scrutiny," as the trademark register's function is not to promulgate commercial transactions; the register is a repository of data whose purpose is to inform the public and is thus not commercial speech.[3]

While refusal to register these trademarks may not prohibit Pro-Football, Inc. from continuing to use the marks, the practical implications of such a decision do burden the mark owner's use of the marks.  Registration of trademarks confers additional rights and remedies on registered trademark owners. Loss of registration strips the mark owner of the presumption of the validity of the marks, shifting the burden of proving ownership and validity of the mark to the mark owner and resulting in increased transaction and enforcement costs for the mark owner. Loss of registration also results in loss of automatic remedies associated with trademark registration, such as the ability to prevent the importation of infringing products from abroad.  Appellate courts could interpret the unequal access to rights and remedies based on the content of a trademark as sufficiently burdensome to free speech, without requiring literal prohibition.

Bruce Allen, president of the Washington Redskins stated: "We look forward to winning on appeal after a fair and impartial review of the case."[4] On August 4, 2015, The Washington Redskins filed a notice to appeal.

Other recent cases have also raised the issue of the constitutionality of Section 2(a).  For example, on April 20, 2015, a three-judge panel of the Court of Appeals for the Federal Circuit affirmed the TTAB's decision to deny registration of the mark "The Slants" to a band, stating that the mark disparaged the Asian community.[5]  Circuit Judge Kimberly Moore authored an additional opinion for that matter, providing a detailed argument that Section 2(a) is unconstitutional because a policy directed at reducing the use of certain marks because of the nature or content of the marks would have a chilling effect on speech.  The Federal Circuit has since issued an order sua sponte vacating its opinion and calling for an en banc hearing on the constitutionality of Section 2(a).[6]

The fate of Section 2(a) is uncertain, but this question promises to yield exciting debate in the months ahead.  Given the emotional involvement of parties on both sides of the debate, and given the potential for a circuit split on a constitutional question, this matter may even find its way before the Supreme Court in the not-too-distant future.


[1] - Pro-Football, Inc. v. Blackhorse, 2015 WL 4096277 (E.D. Va. July 8, 2015).
[2] - Id. at 14.
[3] - Id. at 18.
[4] - Redskins Statement on Judge's Trademark Decision, July 8, 2015.
[5] - In re Tam, 785 F.3d 567 (Fed. Cir. 2015).
[6] - In re Tam, 600 F. App’x 775 (Fed. Cir. 2015).


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