The Washington Redskins Might Be Getting Trademark Help

Posted on May 27, 2015 in Articles

This article originally appeared in The Legal Intelligencer on May 27, 2015.

“I’ll never change the name of the Redskins. You have my word on that.” — Daniel Snyder, current owner of the Washington Redskins.

And so continues the latest controversy over the name of a professional sports team. Last year, the U.S. Patent and Trademark Office (PTO) canceled the Washington Redskins’ trademark registration, citing the federal trademark statute that prohibits the registration of trademarks that are disparaging. Specifically, Section 2(a) of the Lanham Act states, “No trademark … shall be refused registration … unless it … consists of … matter which may disparage.” The team vowed to fight the cancellation of their mark. An appeal has been filed and the case will be heard by the Eastern District of Virginia this June. Whatever the outcome, further appeal is likely.

Help for the Redskins, however, may have just come from a rather unlikely source—an Asian-American rock band called The Slants.

Simon Shiao Tam is the “front man” for The Slants. In 2010, he filed an application to register the mark “The Slants,” and registration was refused because the mark was found to be disparaging. On appeal, the Trademark Trial and Appeal Board (TTAB) affirmed the refusal to register the mark. In an 11-page opinion written by Judge Kimberly Moore, the U.S. Court of Appeals for the Federal Circuit again affirmed the rejection. The opinion reached two conclusions: (1) the TTAB correctly concluded that the mark The Slants is disparaging; and (2) in accordance with precedent, the Lanham Act’s “disparage” restriction is not a violation of the First Amendment.

Following the opinion is a 24-page document, also written by Moore, simply titled “additional views.” In the document, Moore asserted that it is time for the Federal Circuit to reconsider whether the refusal to register a trademark, on the basis of the mark being disparaging, is a violation of the First Amendment.

While Moore’s “additional views” may be helpful to Tam and The Slants, it may provide assistance to Snyder and the Washington Redskins as well. In her “additional views,” Moore stated it is time to revisit In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), the precedent by which Moore affirmed the TTAB’s refusal to register Tam’s mark. In 1981, the U.S. Court of Customs and Patent Appeals (CCPA), predecessor to the Federal Circuit, stated: “With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.”

In the more than 30 years since McGinley, the decision has been criticized and, in addition, much has changed. But is there now a sufficient basis to overrule McGinley?

Moore explained that there are three requirements for finding a violation of the First Amendment:

• The speech must be protected speech.
• A government action must abridge the speech in a way that implicates the First Amendment.
• The abridgment must be unconstitutional when analyzed under the appropriate framework.

So the first question that needs to be answered is: Are trademarks protected speech?

In Bigelow v. Virginia, 421 U.S. 809, 818 (1975), the U.S. Supreme Court held that the First Amendment protects commercial speech. Furthermore, commercial speech is the “dissemination of information as to who is producing and selling what product,” as in Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 765 (1976). Since trademarks identify the source of a product or service, Moore concluded that trademarks are protected commercial speech.

The next question is: Has the government’s action of denying trademark registration implicated the First Amendment?

In McGinley, the court held that refusing to register a trademark does not prevent the owner of the mark from using the mark. Therefore, it was argued that the First Amendment was not implicated. Trademark registration, however, carries certain benefits. While common-law trademark rights are exclusive only to where the trademark is used, a federal trademark provides for exclusive use on a national basis. Furthermore, federally registered trademarks are presumed valid, typically becoming incontestable after five years. Registration also confers federal court jurisdiction and the ability to recover treble damages for willful infringement. These are all considerable benefits, and it has been held that the government cannot withhold benefits when protected speech is involved: The government “may not deny a benefit to a person on a basis that infringes his constitutionally protected interests, especially his interest in freedom of speech. For if the government could deny a benefit to a person because of his constitutionally protected speech or associations, his exercise of those freedoms would in effect be penalized and inhibited,” according to Perry v. Sindermann, 408 U.S. 593, 597 (1972).

Granted, the U.S. Constitution’s spending clause gives Congress broad discretion to “provide for the common defence and general welfare of the United States,” (Article I, Section 8), which includes “the authority to impose limits on the use of such funds to ensure they are used in the manner Congress intends,” as in Agency for International Development v. Alliance for Open Society International, 133 S. Ct. 2321 (2013). The PTO, however, in recent years has become an applicant-funded operation, which combined with other changes in “constitutional jurisprudence” supports the argument that the spending clause does not affect trademark registration.

The third question to be answered is whether Section 2(a) of the Lanham Act, prohibiting registration of a mark that is “disparaging,” is unconstitutional.

A trademark that refers to a certain group in a positive manner may be eligible for trademark registration, but a trademark that disparages that certain group is never eligible for registration (in accordance with Section 2(a)). This appears to be discriminatory, and must survive strict scrutiny in order to be identified as constitutional.

Central Hudson Gas & Electric v. Public Service Commission, 447 U.S. 557 (1980), is the seminal case regarding the constitutionality of restrictions on commercial speech. A restriction on commercial speech is constitutional when four requirements are met:

• The regulated activity must be lawful.
• The asserted government interest must be substantial.
• The restriction must directly advance the asserted government interest.
• The restriction must not be more extensive than necessary.

Moore asserted that discouraging the use of disparaging marks “is not a legitimate government interest,” for “the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable,” citing United States v. Eichman, 496 U.S. 310 (1990). On that basis (and others) she concluded that the Central Hudson requirements had not been met.

The Federal Circuit has now agreed to review the Tam case en banc. No doubt, the Washington Redskins will be watching closely. A win for Tam could translate into a figurative “touchdown” for the Washington Redskins.

– by Lawrence Ashery