Counsel for Blackhorse, The Slants Agree: ACLU Chose Bad Case to Take §2(a) Stand

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By Tamlin Bason

March 11 — Although they are not directly facing each other in court, in some ways Jesse Witten of Drinker Biddle & Reath LLP, Washington, and Ronald D. Coleman of Goetz Fitzpatrick LLP, New York, are at loggerheads on an issue that is quickly becoming the most controversial topic in trademark law: Section 2(a) of the Lanham Act.

Witten represented a group of Native American petitioners at the Trademark Trial and Appeal Board in their successful argument that six trademark registrations used by the Washington Redskins were disparaging under Section 2(a), and thus should be cancelled (88 PTCJ 516, 6/20/14).

Witten is now representing those petitioners-turned-defendants in a civil action in the U.S. District Court for the Eastern District of Virginia that was filed by the team and seeks to overturn the board's decision.

Coleman recently urged the U.S. Court of Appeals for the Federal Circuit to reverse the board's Section 2(a) refusal to register “The Slants” for an Asian-American rock band.

But while they are on opposite ends of the Section 2(a) spectrum in their respective cases, the two attorneys were both disappointed with the American Civil Liberties Union's March 5 amicus brief in the Blackhorse case that argued that Section 2(a) violates the First Amendment.

“I am not pleased,” Witten said, somewhat in jest during a March 10 PTO Day panel. Coleman's displeasure was even more apparent, though he takes issue not so much with the stand that the ACLU has taken as he does with the venue in which it choose to take a stand.

“The NFL can take care of itself rather well,” Coleman said, before sarcastically adding, “That's why the ACLU evidently chose to help them out and not to help The Slants out.”

Attacking the Record, Not the Statute.

A decision in Coleman's case, In re Tam, No. 14-1203 (Fed. Cir. argued 1/9/15), could come any day.

And if Coleman and his client have it their way, the Federal Circuit will reverse the board's refusal without necessarily having to rule on the constitutionality of Section 2(a), 15 U.S.C. §1052(a).

“The Slants appeal is not primarily an attack on Section 2(a); it just got that way when we got up to the Federal Circuit,” Coleman said. “Which was not fun.”

The Slants' appeal is primarily an attack on the fact that the trademark examiner refused registration based not on the record that was before him, but based on an earlier record in which the specimens of use clearly established a link with to the band's Asian heritage.

Coleman, who was not involved in the prosecution of the first application, said he was not surprised that it was rejected on disparagement grounds.

The problem, he said, was that although the new application included no such specimens, the examiner nonetheless “cut and pasted the final office action denying the earlier application.”

The TTAB then affirmed that rejection (86 PTCJ 1138, 10/4/13).

“The Slants application that we are appealing from was never examined,” Coleman said.

‘The Problem That is Haunting Us All.'

During oral argument, however, the Federal Circuit seemed fairly interested in the First Amendment argument that Coleman had raised, even if he did not necessarily want it to be the focal point of the appeal.

“When you get into an oral argument at the appellate level, you don't want to lead with you chin, which leading with the constitutional argument is always going to be,” Coleman said.

And in any event, Coleman said the constitutional argument in his case was not that Section 2(a) is wholly unconstitutional. He said that it clearly had merit in preventing the government from registering marks that are clearly scandalous or disparaging.

But the phrase “the slants” is not clearly disparaging, Coleman said, and he predicted that the trademark would have been registered by the Patent and Trademark Office if his client had been white rather than Asian.

“I don't know exactly where you draw the line, though,” he said. “That's the problem that is haunting us all. It is that we don't want to live in a world where the government would sign off” on an application to register words that are offensive in any context.

“When it comes to the Redskins marks, I don't think there is a serious factual question about whether ‘redskins' was ever not offensive. It is not a good faith argument in my opinion,” Coleman said. “The Redskins don't have an answer to that, short of a policy argument.”

Coleman noted, however, that the team has a policy argument, which was recently buttressed by the ACLU's brief.

Witten said that although the Department of Justice has intervened in his case to defend the constitutionality of the statute (89 PTCJ 680, 1/16/15), the defendants will also be briefing the First Amendment issue. During the panel, which was sponsored by the Intellectual Property Owners Association, Witten offered few hints on what arguments Blackhorse would make on the issue.

However, he noted that the defendants had discovered even more evidence of the disparaging nature of the term, including a dictionary definition from 1898.

Another panelist, Stephen Baird of Winthrop & Weinstine PA, Minneapolis, did offer a defense of the statute's constitutionality.

“If any speech is impaired at all, it will be upheld as reasonable time, place and manner regulation,” Baird said.