United States: Fall Is In The Air: Are The Justices Getting Ready For The Gridiron?

Last Updated: September 21 2016
Article by Anthony Rufo

The Washington Redskins Ask The Supreme Court To Block Fourth Circuit From Participation In Important Trademark Cases

Another Labor Day is behind us, kids are back to school, and fall has unofficially arrived (it will become official on the September 22nd equinox). The autumn leaves bring with them two major opening days. One is already behind us, as the NFL literally kicked off its season on September 8 with a matchup between the Carolina Panthers (20) and the Denver Broncos (21).

The opening day for the Washington Redskins (16) and the Pittsburg Steelers (38) took place on September 12, but the D.C. team also has its eye on October 3 – the first day of the Supreme Court's new term. The Redskins have asked the Justices to take on the case of its controversial trademark even before the Court of Appeals for the Fourth Circuit has a say. Let's take a look at what to expect in this and another case concerning nearly identical issues that could go head to head in a Supreme Court constitutionality matchup. The cases concern free speech in relation to trademarks that allegedly disparage minority groups, but you might be surprised by which teams are throwing in the red challenge flag, and which ones are not.

Does the First Amendment Block Part of the Lanham Act?

The Judge in the Redskins Case Says No

As previously discussed here, Pro-Football, Inc. (the owner of the REDSKINS trademark) filed a petition for certiorari with the Supreme Court seeking review of a mid-2015 decision by the Eastern District of Virginia. In the case of Pro-Football, Inc. v. Blackhorse, the District Court upheld a ruling by the Trademark Trial and Appeal Board cancelling the REDSKINS trademark registrations on the grounds that they constitute offensive slurs against Native Americans. Section 2(a) of the Lanham Act bars registration of marks that may disparage or bring into contempt or disrepute people, institutions, beliefs, or national symbols. Since we last reported on this development, attorneys for Amanda Blackhorse, a Navajo who works as a psychiatric social worker, and other Native American parties, filed a brief opposing grant of certiorari on June 27, 2016. The United States also opposed certiorari in a brief filed on the same day.

An interesting twist here is that Pro-Football had already appealed the Eastern District of Virginia decision to the Fourth Circuit Court of Appeals. In that appeal, Pro-Football argues that Section 2(a) is an unconstitutional restraint of the free speech provision of the First Amendment. In fact, the Fourth Circuit appeal has been fully briefed and is tentatively scheduled for oral argument this coming December. So why is Pro-Football looking for a Supreme Court interception?

As discussed below, the Supreme Court has already been asked to review a very similar case decided by the Federal Circuit Court of Appeals, in which the appeals court found Section 2(a) unconstitutional.

Yes, Says the Court in the Case of the All-Asian American Rock Band vs. the Government

The Slants, a dance rock band from Portland, Oregon comprised of all Asian American musicians, was denied a registration for its SLANTS trademark based on a finding under Section 2(a) that the mark is offensive to persons of Asian descent. On behalf of the band, its front man, Simon Tam, appealed the refusal. The band does not consider their use of the term "slants" to be inherently offensive. Indeed, the band argues that the name reclaims Asian stereotypes (including that particular word) as a form of empowerment. Unlike the REDSKINS case, the SLANTS case ultimately resulted in a Federal Circuit decision declaring Section 2(a) unconstitutional for violating the First Amendment. The U.S. Government filed a petition for certiorari with the Supreme Court in April 2016, which has been fully briefed, but remains pending.

Will the Supreme Court Run With One Ball, Two Balls, or None?

By coincidence, two similar cases involving the same issue are winding their way through the courts at the same time, but at different speeds. In light of this unique circumstance, Pro-Football argued to the Supreme Court that, if the Tam case is taken up, the Court should also address the Blackhorse case at the same time, even if the Fourth Circuit has not yet rendered a decision. Such a move would be rare, but is not unprecedented and may be called for in light of what is at stake.

Both the Tam and Blackhorse petitions are ripe for a decision. The Supreme Court does not have to accept either case, but it could choose to hear Tam alone or both Tam and Blackhorse together. Although they deal with the same controversial issue (stereotypes of minority groups) in regard to the same provision of law, there is a compelling reason to hear both cases together instead of just one. The Tam court found Section 2(a) to be unconstitutional in light of arguments in favor of registration made by members of the minority group in question, while the Blackhorse court reached the opposite conclusion and upheld Section 2(a), but also did so in favor of the arguments made by members of the minority group at issue, this time in opposition to registration. By taking up these two cases at the same time, the Supreme Court will have the opportunity to determine what, if any, weight should be given to the identities of the parties in such cases, and to confront head on what appears may be an irreconcilable dichotomy. The overarching interests of justice seem to bend in this direction, but, as is always the case, it is the Supreme Court's play to make.

For even more background on these cases, see here, here, and here.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
25 Oct 2017, Webinar, Boston, United States

Foley Hoag will present a 60-minute webinar on Wednesday, October 25 at 12:30 pm EDT, offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Attendees will learn about the opportunities and pitfalls to be on the lookout for when looking to secure, protect, and enforce an IP portfolio overseas.

1 Nov 2017, Webinar, Boston, United States

Please join Foley Hoag on Wednesday, November 1, 2017 for a webinar that covers the details of drafting an appropriate arbitration clause for your company’s commercial contracts.

9 Nov 2017, Conference, Waltham, United States

Please join us on Thursday, November 9 at the Westin Waltham Hotel for our quarterly New England M&A Forum, which brings the latest in market trends and recent legal developments to the New England M&A professionals' community.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.