United States: What Do The Sons Of Confederate Veterans, The Washington "Redskins," And An Asian-American Boy Band Have In Common?

Last Updated: August 5 2015
Article by Marsha G. Gentner

Check out the Decision in Pro-Football, Inc. v. Amanda Blackhorse, et al, No. 1:14-cv-01043 (ED Va. July 8, 2015)

The big trademark news, of course, is that a federal judge now has weighed in, ordering the U.S. Patent and Trademark Office to cancel six trademark registrations of Pro-Football, Inc. (the Washington, D.C. NFL team) containing the word “redskins.”

U.S. District Court Judge Gerald Bruce Lee, of the Eastern District of Virginia, ruling on cross motions for summary judgment, rejected all of Pro-Football, Inc. (“PFI”)’s constitutional claims, and affirmed the Trademark Trial and Appeal Board’s determination that “redskins” as used by the Washington, D.C. NFL team, “may disparage” Native Americans. Thus, Judge Lee ruled, the six PFI marks containing that term are barred from federal registration under § 2(a) of the Lanham Trademark Act, 15 U.S.C. § 1052(a), and must be cancelled.

Based on the record before him, Judge Lee’s decision that “redskins” as used by PFI may disparage Native Americans, is not really remarkable, in terms of well-established law interpreting and applying this statutory provision. However, the Constitutional issues—particularly, the First Amendment issues raised by PFI—would appear to be more complex. Judge Lee’s holding that § 2(a) does not implicate the First Amendment rights of PFI rests on three alternative grounds: (1) because PFI remains free to continue to make unfettered use of all of its “redskins” trademarks (and even to sue for infringement under a separate provision of the Lanham Trademark Act applying to unregistered trademarks), § 2(a) does not burden, restrict or inhibit PFI’s speech; (2) the federal statutory trademark registration scheme is a government program, and the government may determine the contents and limitations of its programs; and (3) federal trademark registrations constitute government speech.

The latter holding, that a U.S. trademark registration constitutes government speech, is noteworthy; to this author’s knowledge, no court has previously so ruled. Just last month, the Supreme Court, in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015), held that the state of Texas could refuse the Sons of Confederate Veterans’ request for a confederate flag vanity license plate, because the license plates are government speech. The Supreme Court found the vanity license plates were government speech because license plates historically communicate messages from states; the public closely associates official state license plate designs with states; and Texas maintains direct control over the messages on the plates, choosing how to present itself and its constituency. Judge Lee’s First Amendment analysis relied heavily on Walker, applying its three factor “test” to arrive at the conclusion that a U.S. trademark registration is government speech. Judge Lee also relied, in part, on previous decisions of the U.S. Court of Appeals for the Federal Circuit, and its predecessor, the Court of Customs and Patent Appeals, holding that § 2(a) is not unconstitutional under the First Amendment.

And here (wait for it...) is where our Asian-American band makes its appearance. Simon Shiao Tam is the front man for a band calling themselves THE SLANTS. Mr. Tam’s application to federally register THE SLANTS for entertainment services was refused registration by the USPTO, under § 2(a). Mr. Tam appealed to the Federal Circuit on Constitutional grounds, which initially affirmed the refusal, based on prior precedent (785 F.3d 567). However, one member of the panel, in detailed additional views, questioned the continued validity of that prior precedent, and one week later, the Federal Circuit vacated the panel decision, and determined to hear, en banc, whether the bar on registration of disparaging marks in § 2(a) violates the First Amendment. In re Shiao Tam, 600 Fed. Appx. 775 (Fed. Cir. April 27, 2015).

So the “redskins” saga, and the issue of whether § 2(a) passes Constitutional muster, is far from over. It will be interesting to see if the USPTO, like Judge Lee, attempts to rely on the Supreme Court’s decision in Walker. The USPTO publicly has taken the position that the federal trademark registration scheme does not even endorse any particular speech (an issue implicated by, but not decided in, Walker), let alone that registrations constitute government speech. Stay tuned.

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